Ex Parte 7,902,107 et al

Patent Trial and Appeal Board

Feb 28, 2018

95001894 (P.T.A.B. Feb. 28, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,744 09/07/2011 7,902,107 B248 7004US
(88418.0024.0
4832
109171 7590 03/01/2018
WOMBLE BOND DICKINSON (US) LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-7037
EXAMINER
LOPEZ, CARLOS N
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/01/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,894 02/15/2012 7,902,107 B2 H0610.0506/P506-RE 7108
109171 7590 03/01/2018
WOMBLE BOND DICKINSON (US) LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-7037
EXAMINER
LOPEZ, CARLOS N
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/01/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JOHNSON MATTHEY, INC. & HALDOR TOPSOE A/S DENMARK,
Requesters and Appellants,

v.

Patent of BASF CORPORATION,
Patent Owner and Respondent
____________

Appeal 2017-006009
Reexamination Control 95/001,744 & 95/001,894 (merged)
Patent 7,902,107 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REHEARING
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Patent 7,902,107 B2

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In a Decision on Appeal issued August 29, 2017 (“Decision”), the
panel reversed the Examiner’s decision not to adopt certain proposed
rejections of claims 1, 3–21, 23–34, 36, and 37 of United States Patent
7,902,107 B2 (hereinafter the “’107 Patent”), which by operation of rule
constituted a new ground of rejection under 37 C.F.R. § 41.77(b). In
accordance with 37 C.F.R. § 41.77(b)(2), Patent Owner BASF Corporation
(hereinafter “Patent Owner”) requests rehearing of the Decision under
37 C.F.R. § 41.79.1 Request for Rehearing (“Request” or “Req. Reh’g”)
dated September 29, 2017.
Third-Party Requester Johnson Matthey, Inc. (hereinafter “JMI”)
submitted comments on Patent Owner’s Request for Rehearing on October
27, 2017 (hereinafter “Comments”). Third-Party Requester Haldor Topsoe
A/S Denmark (hereinafter “HTAS”) did not file a response to Patent
Owner’s Request.
Patent Owner contends that the Board misapprehended or overlooked
the following points:
1. The Board overlooked extensive testimony of experts that the
teaching of Ohno ’3512 would not have led one of ordinary skill in

1 37 C.F.R. § 41.79(b)(1) states: “Arguments not raised in the briefs before
the Board and evidence not previously relied upon in the briefs are not
permitted in the request for rehearing except as permitted by paragraphs
(b)(2) and (b)(3) of this section.” 37 C.F.R. § 41.79(b)(3) states: “New
arguments responding to a new ground of rejection made pursuant to
§ 41.77(b) are permitted.”
2 WO 02/26351 A1 published April 4, 2002, citations to English translation
of Record.
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the art to incorporate the SCR catalyst disclosed in Speronello3 in a
wall-flow monolith as disclosed in Ohno ’351 (Request 2–5);
2. The Decision misapprehended or overlooked significant and
consequential differences between wall-flow filters and flow-
through filters, overlooking the state of the art at time of the
invention (Request 5–6); and
3. The Decision overlooks extensive testimony from those skilled in
the art supporting Patent Owner’s position that Ohno ’351 requires
an oxidation catalyst. (Request 6–7.)

As further discussed below, we are not persuaded that the Decision
was deficient for the reasons argued by Patent Owner.
1. Combination of Ohno ’351 with Speronello
Patent Owner contends that the Board did not identify a sufficient
reason for combining Ohno ’351 and Speronello and overlooked the
testimony of Dr. Haller and Dr. Farrauto with respect to Patent Owner’s
contention that Ohno ’351 teaches away from washcoat methods and
discloses a different type of filtrate system from the system in Speronello
and the system recited in the claims of the ’107 Patent. (Request 5–6, citing

3 U.S. Patent 5,516,497 issued May 14, 1996.
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Haller ’744 Decl.4 ¶¶ 11–13, 17; Farrauto Decl.5 ¶ 16, ¶¶ 11–25; Patchett
’744 Decl.6 ¶¶ 10–13.)
We are not persuaded that we misapprehended or overlooked the
evidence of record in this regard. In the Decision, citing the Haller ’744
Declaration ¶ 13, Farrauto Declaration ¶¶ 18–19, and Patchett ’744
Declaration ¶ 14, we expressly addressed Patent Owner’s contention that
Ohno ’351 teaches away from wash coating and that such coating would
impart structural characteristics that would distinguish it from the prior art.
(Decision 18–19.) Thus, while Patent Owner cites additional paragraphs in
the declarations beyond those cited in the Decision, it is evident that the
Decision did not overlook such evidence and the positions expressed therein.

2. Difference between wall-flow filters and flow-through monoliths
Patent Owner contends that with respect to wall-flow filters and flow-
through monoliths, the Decision overlooked the state of the art at the time of
the invention and did not sufficiently explain why one of ordinary skill in the
art would have modified Ohno ’351 and Speronello, and quotes the Dettling
’744 Declaration, paragraph 24 for the proposition that the teachings of
Speronello would be irrelevant to Ohno ’351. (Request 5–6, citing also

4 Declaration of Gary L. Haller, Ph.D. Under 37 C.F.R. § 1.132 and exhibit,
dated January 23, 2012.
5 Declaration of Robert J. Farrauto, Ph.D. Under 37 C.F.R. § 1.132 and
exhibits, dated June 27, 2012.
6 Declaration of Joseph A. Patchett, Ph.D. Under 37 C.F.R. § 1.132, dated
June 28, 2012.
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Dettling ’744 Decl.7 ¶¶ 13–17; Haller ’744 Decl. ¶ 19; Second Haller Decl.8
¶ 28; Decision 19–20.)
The Decision discusses Patent Owner’s contentions with respect to the
difference between wall-flow filters and flow-through filters. (Decision, pp.
19–20, section titled “Wall-Flow v. Flow-Through Filters”.) Contrary to
Patent Owner’s contentions, the Decision did not end the analysis by simply
concluding that the different filter types disclosed in Speronello and Ohno
’351 did not mean that Speronello and Ohno ’351 were in different technical
fields.
Rather, the Decision further explains:
Both types of filters are associated with the purification of
exhaust from engines, and in particular reduction of NOx gases
therefrom. (FF 2, 4, 5, 9, 10.) Moreover, both Ohno ’351 and
Speronello do not limit the applications with which the filters
described therein could be used. (FF 4, 5, 8.) In addition, as
evidenced by Heck, zeolites were known in the art to be used
for NOx reduction with ammonia at higher temperatures.
(Heck, Fig. 8.9.) Accordingly, Patent Owner’s contentions with
respect to the considerations involved with different types of
filters are not persuasive.

(Decision 20.)
In addition, the Decision expressly references JMI’s Appeal Brief and
declaration evidence. (Decision 19–20; JMI App. Br. 6, 9–10; Walker

7 Declaration of Joseph C. Dettling Under 37 C.F.R. § 1.132 and exhibits,
dated June 29, 2012.
8 Second Declaration of Gary L. Haller, Ph.D. Under 37 C.F.R. § 1.132 and
exhibits, dated June 28, 2012.
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Decl.9 ¶ 11; Phillips Decl. ¶ 5.) The Walker Declaration and the Phillips
Declaration provide evidence that is contrary to the statements made in the
Dettling ’744 Declaration quoted by Patent Owner in the Request.
Specifically, the Phillips Declaration10 states that one of ordinary skill in the
art would have sought to optimize the amount of SCR catalyst loaded onto a
relatively high porosity wall flow filter to avoid undue back pressure and
would have considered the general filter coating knowledge available at the
time, including washcoat loading of catalysts for soot combustion or NOx
absorption. (Phillips Decl. ¶ 5.) The Walker Declaration states that one of
ordinary skill in the art would have looked to SCR catalysts used on a flow
through substrate in Speronello because the catalytic functional requirements
are the same. (Walker Decl. ¶ 11.)
The Decision expressly references paragraph 19 of the (first) Haller
’744 Declaration cited by Patent Owner in the Request. (Decision 19–20.)
Thus, it is evident that the Decision considered the Haller ’744 Declaration.
Regarding paragraph 28 of the Second Haller Declaration specifically
referenced by Patent Owner in the Request, which discusses certain
deficiencies in the experiments in the Phillips Declaration relating to
unexpected results, the Decision discusses unexpected results and references
the Second Haller Declaration’s conclusions that the results are unexpected,
stating that the results were not commensurate in scope with the claims.
(Decision 22, 21–25.)

9 Declaration of Andrew P. Walker, Ph.D., Under 37 C.F.R. § 1.132 and
exhibits, dated February 24, 2012.
10 Declaration of Paul R. Phillips, Ph.D., Under 37 C.F.R. § 1.132, dated
February 3, 2012.
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Thus, after weighing the evidence of record, including the declaration
evidence presented by Patent Owner and the declaration evidence presented
by JMI, we were not persuaded by Patent Owner’s contention that the
difference between wall-flow filters and flow-through filters would have
dissuaded one of ordinary skill in the art from combining Ohno ’351 and
Speronello. (See Decision 25.) Accordingly, we are not persuaded that we
misapprehended or overlooked the evidence regarding the difference
between wall-flow and flow-through monoliths.

3. Disclosure of Ohno ’351
Patent Owner contends that the Decision overlooked expert testimony
in concluding that Ohno ’351 does not require an oxidation catalyst.
(Request 6.) Patent Owner also argues that they have explained that
substituting an SCR catalyst in Ohno ’351 would destroy the purpose of
Ohno ’351. (Request 6–7, citing Dettling Decl. ¶ 24, Farrauto Decl. ¶ 14,
2nd Haller Decl. ¶ 17.)
The Decision addressed this argument and cited to evidence stating:
“In this regard, we agree with JMI that Ohno ’351, while providing an
example of an oxidation catalyst, is not limited to oxidation catalysts, but is
generally directed to ‘an exhaust gas purifying filter.’ (FF 4; JMI App. Br.
9; Second Blakeman Decl.11 ¶¶ 12, 13.)” (Decision 20–21.) In doing so, the
Decision considered Patent Owner’s evidence, but in view of the disclosure

11 Second Declaration by Phillip G. Blakeman, Ph.D., Under 37 C.F.R.
§ 1.132.
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of Ohno ’351 and the declaration evidence provided by JMI, the Board was
not persuaded by Patent Owner’s narrow interpretation of Ohno ’351.

Therefore, we decline to make any changes in the Decision mailed
September 28, 2016. Accordingly, the Request for Rehearing is denied.

DENIED

PL: peb

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Patent 7,902,107 B2

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PATENT OWNER:
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. Box 7037
Atlanta, GA 30357-7037

THIRD-PARTY REQUESTER:
Stephen A. Soffen
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006-5403