Ex Parte Calvo

Patent Trial and Appeal Board

May 29, 2018

14031221 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/031,221 09/19/2013
23872 7590 05/30/2018
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
FIRST NAMED INVENTOR
Silvia CAL VO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
74487 1068
EXAMINER
MAINES, PATRICK DAVID
ART UNIT PAPER NUMBER
3748
MAILDATE DELIVERY MODE
05/30/2018 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
Ex parte SIL VIA CAL VO
Appeal2017-000855
Application 14/031,221
Technology Center 3700
Before CHARLES N. GREENHUT, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-000855
Application 14/031,221
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant Silvia Calvo 1 appeals from
the Examiner's decision, as set forth in the Final Office Action dated May 8,
2015 ("Final Act.") and the Advisory Action dated June 5, 2015 ("Adv.
Act."), rejecting claims 1-15 and 21-25. 2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to an exhaust system for a motor vehicle.
Claims 1, 15, and 21 are the independent claims on appeal. Claim 1,
reproduced below with disputed limitations italicized for emphasis, is
illustrative of the claimed subject matter:
1. An exhaust system for a motor vehicle, the exhaust system
compnsmg:
an exhaust gas-purifying means for purifying exhaust gas
removed from an internal combustion engine of the motor
vehicle;
a reducing agent feed means for introducing a reducing
agent into the exhaust system, the reducing agent feed means
being located at a spaced location downstream from the exhaust
gas-purifying means, said reducing agent feed means being
arranged with respect to said exhaust gas-purifying means and
being adapted to feed the reducing agent in a manner that would
cause the reducing agent to contact said exhaust gas-purifying
means; and
Appellant identifies Eberspacher Exhaust Technology GmbH & Co.
KG. as the real party in interest. Appeal Brief, dated November 6, 2015
("Appeal Br."), at 1.
2 Claims 16-20 are cancelled. Claims Appendix, (Supplemental
Appeal Br., dated February 22, 2016 ("Claims App."), at 3.
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Application 14/031,221
a reducing agent-deflecting device arranged between the
exhaust gas-purifying means and the reducing agent feed means,
the reducing agent-deflecting device having a reducing agent-
deflecting element with a blade design, said deflecting device
and said reducing agent feed means being arranged to block the
reducing agent from contacting said exhaust gas-purifYing
means.
Claims App. 3.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the following
prior art:
Koehler
Kaiser
US 2008/0302088 Al
US 2010/0107617 Al
REJECTIONS
The Examiner made the following rejections:
Dec. 11, 2008
May 6, 2010
1. Claims 1-14 and 21-25 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 1-14 [sic, 15] and 21-25 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
3. Claims 1-8, 15, and 21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Koehler.
4. Claims 9, 10, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Koehler.
5. Claims 11, 14, 15, and 22-25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Koehler and Kaiser.
Appellant seeks our review of these rejections.
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Appeal2017-000855
Application 14/031,221
DISCUSSION
Rejection 1: Claims 1-14 and 21-25
Fail to Comply with the Written Description Requirement
Claims 1 and 21 recite that "said deflecting device and said reducing
agent feed means being arranged to block the reducing agent from
contacting said exhaust gas-purifying means." Claims App. 3, 6-7.
The Examiner finds that the Specification does not support that the
"reducing agent feed means [is] arranged to block the reducing agent from
contacting" the exhaust gas-purifying means. Final Act. 6. According to the
Examiner, the Specification only supports "blocking of the reducing agent by
the deflecting device." Id. We disagree.
We agree with Appellant that "the claims set forth that it is the
deflecting device and the feed means together that are arranged to prevent
reducing agent from contacting the purifying means." Appeal Br. 14 (citing
Spec. i-fi-19, 10, 15, 19, 44, and 45). The Examiner's 112, first paragraph,
rejection is premised on an incorrect claim construction. The Examiner
incorrectly attributes the recited action "to block" to each of the "deflecting
device" and "reducing agent feed means." See Ans. 4. However,
considering the express language of the claim in light of Appellant's
Specification (e.g., i-fi-1 43--45), one skilled in the art would understand that
the phrase "being arranged to" means that it is the relative arrangement of
the "deflecting device" and the "reducing agent feed means" that causes
"block[ing]" and not necessarily each component individually. As the §
112, first paragraph, rejection is premised on an incorrect claim construction,
the rejection is not sustained.
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Application 14/031,221
Rejection 2: Claims 1-14 [sic, 15] and 21-25 are Indefinite
The Examiner's indefiniteness rejection refers to independent claims 1
and 21, not independent claim 15. Independent claims 1, 15, and 21,
however, recite the same two limitations which form the basis of the
Examiner's indefiniteness rejection:
[limitation 1] said reducing agent feed means being arranged
with respect to said exhaust gas-purifying means and being
adapted to feed the reducing agent in a manner that would cause
the reducing agent to contact said exhaust gas-purifying means;
and ....
[limitation 2] said deflecting device and said reducing agent feed
means being arranged to block the reducing agent from
contacting said exhaust gas-purifying means.
Claims App. 1, 5-7 (emphasis added). Because these two limitations are
common to all three independent claims, we understand that claim 15 should
be included in the rejection, and the Examiner's failure to reference claim 15
is a typographical error.
The Examiner finds that the claim language creates an "ambiguity"
because the claims "recite a reducing agent feed/feed means to feed reducing
agent [so it contacts the gas-purifying means] later followed by the feed
means being arranged to block the reducing agent" and "[i]t is unclear how
both of these functions can be performed simultaneously as they are
contradictory." Final Act. 7; see also Answer, dated August 24, 2016
("Ans."), at 5-6.
In response to the Examiner's rejection, Appellant asserts that
These claims are not indefinite because the feed means
[is] not set forth as blocking the reducing agent all by itself.
Instead, it is the combination of the deflecting device and the
reducing agent feed/feed means together being arranged to
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Appeal2017-000855
Application 14/031,221
block the reducing agent. The feed means only introduces the
reducing agent in directions that the deflecting device can
block, and the deflecting device is arranged to specifically
block the reducing agent in those directions. Therefore, the two
work together to block the reducing agent from contacting the
exhaust gas purifying means. The reducing agent feed/feed
means therefore does not have contradictory functions, and is
not ambiguous.
Appeal Br. 15-16; see also Reply Brief, dated October 21, 2016 ("Reply
Br."), at 2-3. Appellant also asserts that the "deflecting device 7 of present
invention thus allows the reducing agent feed 4 to be placed close to the
purifying means 2, and to feed in the upstream direction which, without the
deflecting device, would cause reducing agent to contact the purifying
means." Appeal Br. 3.
Appellant's argument is not persuasive. According to limitation 1, the
reducing agent feed means is arranged so that it is adapted to feed the
reducing agent in a manner that would cause the reducing agent to contact
the exhaust gas-purifying means. Limitation 2 requires that the deflecting
device and the reducing agent feed means are arranged to block the reducing
agent from contacting the exhaust gas-purifying means. The claims as
presently written require the reducing agent feed means to be arranged and
adapted to cause reducing agent both "to contact" and "not contact" the gas-
purifying means, making it unclear exactly what structural aspects of the
reducing agent feed means are being defined by the conflicting functions
recited in association with the "arranged" and "adapted to" language.
Contrary to Appellant's arguments, the claims do not recite that the reducing
agent would only contact the gas-purifying means in a hypothetical situation
when the recited deflecting device is not present. Cf Appeal Br. 3---6
(responding to the anticipation rejection by, among other things, arguing
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Application 14/031,221
Koehler does not disclose a feed means arranged to cause reducing agent to
contact the purifying means); Spec. i-f 15 (stating that some of the reducing
agent ("only a very low percentage") can enter the exhaust gas-purifying
means).
Thus, we agree with the Examiner that the requirements that the
reducing agent feed means be both arranged and adapted in a manner that
"would cause" reducing agent contact with the gas-purifying means, and
block reducing agent from contacting the gas-purifying means, renders
claims 1, 15, and 21 unclear. We sustain the Examiner's rejection that
claims 1, 15, and 21 fail to comply with 35 U.S.C. § 112, second paragraph,
by failing to particularly point out and distinctly claim the subject matter
which Appellant regards as the invention. Claims 2-14 and 22-25, which
depend from claims 1 and 21, likewise, are indefinite.
Re} ections 3-5
Having determined that claims 1-15 and 21-25 are indefinite based
on a limitation at issue in the prior-art rejections (App. Br. passim), we
cannot sustain the rejections of these claims under 35 U.S.C. §§ 102(b) and
103 (a) because to do so would require speculative assumptions as to the
meaning and scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300
(Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation
rejection of indefinite claims); In re Steele, 305 F.2d 859, 862---63 (CCPA
1962) (holding that the Board erred in affirming a rejection of indefinite
claims under 35 U.S.C. § 103(a)). We emphasize that our reversal of the
rejections is because the claims are indefinite; hence, a decision has not been
made based on the merits of the prior art rejections of the claims.
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Application 14/031,221
DECISION
For the above reasons, the Examiner's rejection of claims 1-14 and
21-25 under 35 U.S.C. § 112, first paragraph, is REVERSED.
The Examiner's rejection of claims 1-15 and 21-25 under 35 U.S.C.
§ 112, second paragraph, is AFFIRMED.
The Examiner's rejections of claims 1-15 and 21-25 under 35 U.S.C.
§§ 102(b) and 103(a) are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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