DENSO CORPORATION

Patent Trials and Appeals Board

May 26, 2020

15319185 - (D) (P.T.A.B. May. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/319,185 12/15/2016 Kazuhiko KOIKE RYM-2635-1624 3132
23117 7590 05/26/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KRCHA, MATTHEW D
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
05/26/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAZUHIKO KOIKE, MASAYUKI TAMURA, and
HIROKATSU IMAGAWA

Appeal 2019-003403
Application 15/319,185
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–10.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, “DENSO CORPORATION” (Application Data
Sheet filed December 15, 2016 at 6), which is also identified as the real
party in interest (Appeal Brief filed January 11, 2019 (“Appeal Br.”) at 3).
2 See Appeal Br. 6–14; Reply Brief filed March 27, 2019 (“Reply Br.”) at
2–7; Final Office Action entered August 28, 2018 (“Final Act.”) at 3–8;
Examiner’s Answer entered February 1, 2019 (“Ans.”) at 3–5.
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I. BACKGROUND
The subject matter on appeal relates to a particulate matter detection
sensor for detecting particulate matter in an exhaust gas discharged from an
internal combustion engine (Specification filed December 15, 2016
(“Spec.”) ¶ 2). Figure 2 (annotated), which illustrates an embodiment of the
claimed subject matter, is reproduced from the Drawings filed December 15,
2016, as follows:

Figure 2 depicts a partially enlarged view showing a part of a particulate
matter detection sensor 1 in accordance with an embodiment of the claimed
subject matter, wherein the sensor includes, inter alia, a particulate amount
detector 2 with a deposition portion 21 on which spaced-apart detection
electrodes 23 are disposed and on which particulate matter is deposited, a
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cover member 3 with a cylindrical cover wall 31 having exhaust gas
introduction holes 311 through which exhaust gas G is introduced and an
exhaust gas discharge hole 321, and an outer cover member 4 with outer
introduction holes 411 and outer discharge hole 421 (Spec. ¶¶ 20, 23). As
shown in Figure 2 and as described in the Specification, the exhaust gas
introduction holes 311 are formed at positions closer to the tip side of the
cover 3 than is the deposition portion 21, which is oriented towards the tip
side (id. ¶¶ 9–11, 23). The Specification explains that because the
orientation (in the circumferential direction) of the deposition portion 21
does not change relative to the exhaust gas G’s flow direction F, it is not
necessary to control the circumferential orientation of the deposition portion
21 relative to the exhaust gas flow in any particular way (id. ¶ 9).
Additionally, the Specification states that “the exhaust gas [G] easily
contacts the deposition portion [21]” (id. ¶ 10 (bracketed matter added)).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A particulate matter detection sensor, comprising:
a particulate matter detection unit including a deposition
portion on which a part of particulate matter contained in an
exhaust gas discharged from an internal combustion engine is
deposited, and a plurality of detection electrodes disposed being
spaced apart from each other on the deposition portion, wherein
an output of an electrical signal is changed according to change
of electrical characteristics due to the deposition of the
particulate matter on the deposition portion; and
a cover member including a cylindrical cover wall
arranged so as to surround the particulate matter detection unit,
wherein:
the deposition portion of the particulate matter detection
unit is disposed so as to be oriented towards a tip side in an
axial direction of the cover member; and
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the cover wall of the cover member is provided with a
plurality of exhaust gas introduction holes which are formed at
positions closer to the tip side than the deposition portion is,
such that the full extent of each of the plurality of exhaust gas
introduction holes is closer to the tip side than the deposition
portion in the axial direction of the cover member.
(Appeal Br. 15 (emphases added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103, as
follows:3
A. Claims 1–3 and 10 as unpatentable over Sugiura et al.4
(“Hiroshi”) in view of Takenami et al.5 (“Susumu”);
B. Claim 4 as unpatentable over Hiroshi, Susumu, and Okumura et
al.6 (“Tatsuya”); and
C. Claims 5–9 as unpatentable over Hiroshi, Susumu, and
Yamada7 (Hirokazu).
(Final Act. 3–5; Ans. 3–5).
III. DISCUSSION
A dispositive issue in this appeal is whether the preponderance of the
evidence supports the Examiner’s conclusion that a person having ordinary

3 The Examiner and the Appellant identify each cited reference by the first-
listed inventor’s given name (Final Act. 3, 5; Appeal Br. 6, 14). To avoid
confusion, we also refer to the references by the first-listed inventor’s given
name in our discussion below.
4 JP 2012-78130, published April 19, 2012 (machine-generated translation).
5 JP 2012-68148, published April 5, 2012 (machine-generated translation).
6 JP 2008-116355, published May 22, 2008 (machine-generated translation).
7 US 2004/0244467 A1, published December 9, 2004.
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skill in the art would have determined—through routine experimentation—
the optimum positioning of the prior art’s exhaust gas introduction holes
such that their distances from the cover’s tip are closer than that of the
deposition portion to the tip (Final Act. 3–4). For the reasons given by the
Appellant and below, we hold that the Examiner’s conclusion is not
supported by sufficient factual evidence and, therefore, constitutes reversible
error.
Hiroshi discloses a particulate matter (PM) detection sensor S in
Figure 2(a) (annotations in English added to the copy of record), as follows:

Hiroshi’s Figure 2(a) above shows a particulate sensor S including, inter
alia, a sensor element 1 comprising an insulation base body 10 on which a
detection unit 2 made of detection electrodes e1–e5 is provided and a cover
body 40 provided with holes 410 (not shown) and 411 for in-flow and out-
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flow of particulate matter-containing exhaust gas (Hiroshi Abstract; ¶ 37).
As the Examiner acknowledges (Final Act. 3–4), Hiroshi does not disclose
the last clause highlighted in reproduced claim 1 above. In addition, we find
that Hiroshi does not disclose a deposition portion that is “oriented towards a
tip side in an axial direction of the cover member,” as required by claim 1
(id.). Instead, Hiroshi’s Figure 2(a) shows the detection unit 2 is oriented
radially with respect to the cover body 40 rather than axially towards the
cover body 40’s tip side.
The Examiner relies on Susumu to bridge the gaps between Hiroshi
and claim 1’s subject matter (Final Act. 4). But, as the Appellant argues
(Appeal Br. 9–13; Reply Br. 3–7), Susumu does not resolve the differences
between claim 1’s subject matter and Hiroshi. Specifically, Susumu’s
Figure 4 (annotations in English added to the copy of record) is reproduced
as follows:
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Susumu’s Figure 4 above shows a particulate material sensor including a
detecting element 10 provided with a detection unit 11 onto which
measurement gas introduced through holes H1 on cover member 20 is
collided (Susumu Abstract; ¶ 46). Susumu teaches a “vortex forming
distance [L2] from the center of the detecting portion 11 to the tip of the
cover member 20 is provided” (id. ¶ 46 (bolding added)).
Thus, a person having ordinary skill in the art would have understood
that Susumu’s teaching of forming a vortex flow of the particulate matter-
containing gas after its collision with a radially-oriented detection unit 11 to
provide efficient collection of the particulate matter relates to a completely
different concept or purpose from that disclosed for the current invention,
which is to provide exhaust gas introduction holes that may be positioned
anywhere circumferentially relative to the deposition portion because the
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holes are positioned closer axially to a cover member’s tip side than the
deposition portion (Spec. ¶¶ 6–11 (distinguishing claimed invention over
Susumu)). The Examiner offers no evidence that optimizing the vortex
distance in Susumu would result in the distance or positional relationship
between the deposition portion and the exhaust gas introduction holes
recited in claim 1. Indeed, such optimization would be unlikely because the
configuration recited in claim 1 would not result in a collision of the
particulate-matter containing exhaust gas and a radially-oriented deposition
portion so as to create vortex flow, as required by Susumu. In re Ratti, 270
F.2d 810, 813 (CCPA 1959) (“Th[e] suggested combination of references
would require a substantial reconstruction and redesign of the elements
shown in [the prior art reference] as well as a change in the basic principles
under which the [prior art reference’s] construction was designed to
operate.”).
It follows then that the Examiner’s obviousness analysis based on
routine experimentation has no basis in fact. In re Applied Materials, Inc.,
692 F.3d 1289, 1295 (Fed. Cir. 2012) (citing In re Antonie, 559 F.2d 618,
620 (CCPA 1977)).
For these reasons, we cannot uphold Rejection A. Because neither
Tatsuya nor Hirokazu has been cited to cure the deficiencies in the
Examiner’s combination of Hiroshi and Susumu, we also cannot sustain
Rejections B and C.

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IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 10 103 Hiroshi, Susumu 1–3, 10
4 103 Hiroshi, Susumu,
Tatsuya
4
5–9 103 Hiroshi, Susumu,
Hirokazu
5–9
Overall
Outcome
1–10

REVERSED