Ex Parte Dane

Patent Trial and Appeal Board

Jan 30, 2019

14507524 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/507,524 10/06/2014 Marten H. Dane
116387 7590 02/01/2019
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
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.
106389-0746 7589
EXAMINER
KEBEA, JESSICA L
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTEN H. DANE 1
Appeal2018-004389
Application 14/507 ,524
Technology Center 3700
Before STEVEND.A. McCARTHY, MICHELLE R. OSINSKI, and
NATHAN A. ENGELS, Administrative Patent Judges.
Opinion for the Board by OSINSKI, Administrative Patent Judge.
Opinion dissenting by McCARTHY, Administrative Patent Judge.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
1 Cummins, Inc. ("Appellant") is the Applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Br. 2.
Appeal2018-004389
Application 14/507,524
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4, 8-11, and 14--17. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claims 1, 9, and 15 are independent. Claim 1 is reproduced below.
1. An apparatus, comprising:
a spark-ignited natural gas engine; and
an exhaust system in fluid communication with one or
more combustion chambers of the engine, the exhaust system
including:
an oxidation catalyst having an inlet and an outlet,
the inlet of the oxidation catalyst in fluid communication
with a first portion of the exhaust system and receiving
exhaust gases from the one or more combustion chambers
of the engine, the oxidation catalyst structured to heat the
exhaust gases by oxidizing unburned hydrocarbons in the
exhaust gases, and
a Rankine waste heat recovery system in thermal
communication with a second portion of the exhaust
system, the second portion of the exhaust system coupled
to the outlet of the oxidation catalyst and receiving the
exhaust gases downstream from the oxidation catalyst, the
Rankine waste heat recovery system structured to convert
heat from the heated exhaust gases into at least one of
mechanical and electrical energy,
wherein the exhaust system does not include an
exhaust aftertreatment component other than the oxidation
catalyst.
2 Claims 5-7, 12, 13, 18, and 19 are cancelled. Appeal Br. 15-17 (Claims
App'x).
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Application 14/507 ,524
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Titus
Mendez
Ernst
us 6,018,471
US 2012/0144804 Al
US 8,752,378 B2
THE REJECTIONS
Jan.25,2000
June 14, 2012
June 17, 2014
I. Claims 1, 3, 4, 8, 9, 11, 14, 15, and 17 stand rejected under
35 U.S.C. § 103 as unpatentable over Titus and Mendez. Final
Act. 2-8.
II. Claims 2, 10, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Titus, Mendez, and Ernst. Id. at 8-9.
OPINION
Rejection I
The Examiner finds that Titus teaches many of the limitations of
independent claim 1, including, in relevant part, an "exhaust system
including: an oxidation catalyst ... structured to heat the exhaust gases by
oxidizing unburned hydrocarbons in the exhaust gases." Final Act. 2-3.
The Examiner takes the position that the "heating of the exhaust gas [by
oxidizing unburned hydrocarbons] is an inherent characteristic of the
exothermic reaction taking place within the catalyst." Ans. 3. The
Examiner points out that Titus teaches "the desire to recover the waste heat
energy from the exhaust gases such as by providing steam for heating and/or
other applications in a cogeneration mode." Final Act. 3; see Titus, 56:33-
35 ("The exhaust heat from the engine 449 could be used to provide steam
for heating and/or other applications in a cogeneration mode."). The
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Examiner acknowledges that "Titus is ... silent [as] to where the exhaust
gas heat transfer device would be located in the exhaust line." Ans. 3. Titus
is also silent regarding the type of exhaust gas heat transfer device. The
Examiner finds that Mendez teaches a Rankine waste heat recovery system"
and concludes that it would have been obvious "to modify the engine system
as disclosed by Titus to include a Rankine waste heat recovery system
(Mendez 34) ... in order to ... utilize the waste heat energy from the
exhaust gas to generate power." Final Act. 3.
As to the specific location of the waste heat recovery system relative
to the oxidation catalyst, the Examiner determines that one of ordinary skill
in the art "would know that the reaction within the oxidation catalyst is an
exothermic (heat generating reaction) reaction, [and] therefore, it would be
obvious ... that the Rankine waste heat recovery system be positioned
downstream of the oxidation catalyst in order to recover the heat energy
produced by the reaction within [the] oxidation catalyst." Id. at 3--4; see
also Ans. 3 ("one of ordinary skill in the art would [be] motivated to recover
as much thermal energy as possible"). The Examiner also asserts that, for
"[f]urther evidence of an effective position of the waste heat recovery
generator[, one] could also look to the teachings of Mendez which places the
waste heat exchanger downstream of an oxidation catalyst." Ans. 4.
Appellant argues that "Titus does not teach or suggest using an
oxidation catalyst to oxidize unburned hydrocarbons" and "[i]nstead, Titus
only contemplates use of an oxidation catalyst to oxidize CO." Reply Br. 5
(citing Titus, 56:21-28). Appellant further argues that "[a]lthough some
oxidation catalysts can be configured to oxidize both carbon monoxide and
unburned hydrocarbons, it is not 'an inherent feature of the oxidation
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Application 14/507 ,524
catalyst' of Titus that it is configured as such." Id. (emphasis omitted). We
do not find this argument persuasive in that it appears that the Examiner had
a sound basis for finding that the oxidation catalyst of Titus would
inherently oxidize unburned hydrocarbons to heat the exhaust gas. The
Specification describes the oxidation catalyst as including metal substrates
coated with platinum. Spec. ,r 14. Titus similarly discloses the use of
platinum as the oxidation catalyst. Titus, 56:31-32. The similarity in
material supports the Examiner's finding of inherency. See In re Best, 562
F.2d 1252, 1255 (CCP A 1977) ("Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."); In re King, 801 F.2d 1324, 1327
(Fed. Cir. 1986) (finding it insufficient for an appellant to merely assert that
the prior art does not inherently possess the characteristic relied on and
challenge the PTO to prove the contrary by experiment or otherwise, noting
that "[t]he PTO is not equipped to perform such tasks"). That Titus may not
specifically describe use of its catalyst for oxidizing unburned hydrocarbons
is not evidence or persuasive technical reasoning to establish Titus's
oxidation catalyst is not inherently structured to heat exhaust gases by
oxidizing unburned hydrocarbons in the exhaust gases, even considering that
the amount of hydrocarbons in Titus is small. See Ans. 5 ("The cited
passage of Titus explicitly states that 'the hydrocarbon emissions should be
very small because the hydrogen rich gas typically will contain only a small
fraction of hydrocarbons' means that there are hydrocarbons present in the
exhaust and even provides an oxidation catalyst for removing these
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Application 14/507 ,524
hydrocarbons."). In short, Appellant does not present evidence or persuasive
technical reasoning to explain why Titus's platinum oxidation catalyst would
function differently than the claimed oxidation catalyst.
Appellant also argues that Titus merely teaches a "desire to recover
waste heat produced from the engine" (Appeal Br. 9 (emphasis altered)), as
opposed to "heat produced by the oxidation catalyst" specifically (id. at 10
( emphasis added)). Appellant maintains that "Titus never discusses
converting heat from exhaust gases which have been heated by an oxidation
catalyst." Id. Appellant's argument is unpersuasive of Examiner error as it
fails to adequately address the Examiner's determination that one of
ordinary skill in the art (i) would know that the reaction with oxidation
catalyst is an exothermic (heat generating) reaction and (ii) would be
motivated to recover as much thermal energy as possible by positioning the
oxidation catalyst upstream of the waste heat recovery system. Ans. 3. The
Examiner looks to Titus for generally teaching "a desire to recover useful
waste heat energy in the exhaust" and relies on these further determinations
to support that a person of ordinary skill in the art would have located the
waste heat recovery system as taught by Mendez downstream of the
oxidation catalyst. Id.
Appellant also argues that Mendez "fails to teach or suggest
'convert[ing] heat from the heated exhaust gases,' which are heated by 'an
oxidation catalyst oxidizing unburned hydrocarbons."' Appeal Br. 10-11
( emphasis omitted). Appellant states that Mendez positions a reversible heat
exchanger between two catalysts in a diesel engine system to control the
temperature of the exhaust gas entering the second catalyst. Id. at 10 ( citing
Mendez ,r 32). This argument is also unpersuasive in that Mendez teaches a
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Application 14/507 ,524
heat exchanger 32 that is part of a Rankine cycle type fluid circulation
closed circuit 34, with the heat exchanger provided downstream from a
three-way catalyst whose purpose is, at least in part, to treat unburnt
hydrocarbons through oxidation. Mendez ,r,r 4, 32-34. Mendez also teaches
that the heated working fluid of the Rankine circuit can drive a rotor of an
expansion turbine. Id. ,r 40. Accordingly, we are not persuaded that
Mendez fails to teach a Rankine waste heat recovery system structured to
convert heat from the heated exhaust gases into at least one of mechanical
and electrical energy, as claimed.
Moreover, Appellant's arguments regarding Titus and Mendez are
unpersuasive in that they attack the references individually. "Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413,425 (CCPA 1981)). Appellant's
argument that neither cited reference teaches the disputed limitation does not
address the Examiner's findings and reasoning for the conclusion of
obviousness presented in the rejection.
Appellant also argues that the claimed invention "exhibit[ s] technical
advantages that are not realized by Titus and Mendez, alone or in
combination." Appeal Br. 11. More particularly, Appellant argues that
"[t]he hydrogen-rich gas of Titus does not produce a material amount of
unburned hydrocarbons to be oxidized by the oxidation catalyst." Id. at 12.
Appellant appears to be arguing that there would not be much additional
heat produced by the oxidation catalyst for capture by a waste heat recovery
system. Appellant also argues that Mendez is not particularly concerned
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Application 14/507 ,524
with capturing waste heat produced by an oxidation catalyst of an exhaust
system that does not have an exhaust aftertreatment component because it is
instead concerned with ensuring that the exhaust gas is at a particular
temperature for use in a selective catalytic reduction (SCR) catalyst. Id. at
10-13. Appellant asserts that "the combination of Titus and Mendez would
not produce the technical benefit of maximizing fuel usage of a natural gas
engine by capturing waste heat produced by an oxidation catalyst of an
exhaust system that does not include an exhaust aftertreatment component
other than the oxidation catalyst." Id. at 12-13.
Appellant's contention is not persuasive because it is immaterial if the
exact same particular technical advantages that motivated Appellant would
have led one of ordinary skill in the art to combine the teachings of Titus and
Mendez. Rather, Appellant must persuasively explain why the Examiner's
articulated reasoning lacks rational underpinnings. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,415,418 (2007)) (requiring that we look to whether the
examiner has provided "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.").
Here, the Examiner reasons that Titus teaches the desirability of
recovering exhaust heat from the engine and one of ordinary skill in the art
would know that the reaction with the oxidation catalyst in Titus is
exothermic and, consequently, would have positioned a waste heat recovery
system (e.g., Mendez's Rankine waste heat recovery system) downstream of
the oxidation catalyst. Even if the amount of additional heat generated in
Titus is small due to the small amount of unburned hydrocarbons, this does
not explain why the Examiner's articulated reasoning lacks rational
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Application 14/507 ,524
underpinnings. As to the fact that Mendez contemplates use of its waste
heat recovery system with an exhaust aftertreatment component other than
the oxidation catalyst (i.e., the SCR catalyst), this does not explain why the
Examiner's articulated reasoning to modify Titus ( which does not have an
aftertreatment component other than the oxidation catalyst) lacks rational
underpinnings.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the combination of Titus and Mendez renders obvious the
subject matter of independent claim 1. We sustain the rejection of claim 1
under 35 U.S.C. § 103 as unpatentable over Titus and Mendez. We also
sustain the rejection of claims 3, 4, 8, 9, 11, 14, 15, and 17, for which
Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with independent claim 1. Appeal Br. 7-13.
Rejection II
Appellant presents no additional arguments in support of the
patentability of dependent claims 2, 10, and 16 other than those that relate to
the perceived deficiencies in the combination of Titus and Mendez in
connection with independent claims 1, 9, and 15. Appeal Br. 13. Because
we have found no such deficiencies in the combination of Titus and Mendez
in connection with independent claims 1, 9, and 15, we are not persuaded of
error in the Examiner's rejection of claims 2, 10, and 16 under 35 U.S.C.
§ 103 as unpatentable over Titus, Mendez, and Ernst.
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DECISION
The Examiner's decision to reject claims 1, 3, 4, 8, 9, 11, 14, 15, and
17 under 35 U.S.C. § 103 as unpatentable over Titus and Mendez is
affirmed.
The Examiner's decision to reject claims 2, 10, and 16 under
35 U.S.C. § 103 as unpatentable over Titus, Mendez, and Ernst is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTEN H. DANE
(Applicant: Cummins, Inc.)
Appeal2018-004389
Application 14/507 ,524
Technology Center 3700
Before STEVEND.A. McCARTHY, MICHELLE R. OSINSKI and
NATHAN A. ENGELS, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
The Examiner rejects claims 1, 3, 4, 8, 9, 11, 14, 15 and 17 under 35
U.S.C. § 103 as being unpatentable over Titus (US 6,018,471, issued Jan.
25, 2000) and Mendez (US 2012/0144804 Al, publ. June 14, 2012) (Final
Office Action, mailed Apr. 7, 2017 ("Final Act."), at 2); and claims 2, 10
and 16 under § 103 as being unpatentable over Titus, Mendez and Ernst (US
8,752,378 B2, issued June 17, 2014) (Final Act. 8). My colleagues affirm.
Because I believe that the Examiner has not shown the subject matter of the
claims to have been obvious, I dissent.
Appeal2018-004389
Application 14/507 ,524
CLAIMED SUBJECT MATTER
The Specification teaches that:
For spark-ignited engines, such as natural gas engines, a larger
concentration of unburned hydrocarbons and/or carbon
monoxide may be present in the exhaust gas. For instance, spark-
ignited engines may have a combustion efficiency of
approximately 98%. Thus, approximately 2% of the fuel energy
is not utilized and leaves the engine as unburned hydrocarbons
and/or carbon monoxide. In some implementations, a waste heat
recovery system may be included as part of the exhaust system
to capture the heat of the exhaust gases and convert the heat to
useful energy (e.g., electrical and/or mechanical energy). To
maximize the usage of the fuel, an oxidation catalyst may be
positioned upstream of the waste heat recovery system to oxidize
the unburned hydrocarbons and/or carbon monoxide, thereby
producing additional heat for the exhaust gases. Such additional
heat may be captured by the waste heat recovery system and
converted into electrical or mechanical energy.
(Specification, dated Oct. 6, 2014, ("Spec."), para. 11).
The Specification additionally teaches that the waste heat recovery
device may include an organic Rankine cycle system. (See Spec. para 16).
In an organic Rankine cycle system, heat drawn from the engine exhaust
flow is collected by a heat exchanger and used to evaporate an organic liquid
to form a pressurized, organic gas. The pressurized, organic gas then flows
through an expander, such as a turbine, to generate mechanical or electrical
energy. After exiting the expander, the organic gas is condensed back into a
liquid and then pumped back to the heat exchanger to draw more heat from
the engine exhaust gas flow. (See generally Ernst, col. 4, 11. 8-59). Systems
using organic working fluids having a relatively low boiling points, as
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Application 14/507 ,524
opposed to water or steam, may be able to recover waste heat from sources
having lower temperatures than water-based systems.
Claims 1, 9 and 15 are independent:
1. An apparatus, comprising:
a spark-ignited natural gas engine; and
an exhaust system in fluid communication with one or
more combustion chambers of the engine, the exhaust system
including:
an oxidation catalyst having an inlet and an outlet,
the inlet of the oxidation catalyst in fluid communication
with a first portion of the exhaust system and receiving
exhaust gases from the one or more combustion chambers
of the engine, the oxidation catalyst structured to heat the
exhaust gases by oxidizing unburned hydrocarbons in the
exhaust gases, and
a Rankine waste heat recovery system in thermal
communication with a second portion of the exhaust
system, the second portion of the exhaust system coupled
to the outlet of the oxidation catalyst and receiving the
exhaust gases downstream from the oxidation catalyst, the
Rankine waste heat recovery system structured to convert
heat from the heated exhaust gases into at least one of
mechanical and electrical energy,
wherein the exhaust system does not include an exhaust
aftertreatment component other than the oxidation catalyst.
9. An exhaust system for a spark-ignited natural gas
engine, consisting essentially of:
a first exhaust system portion receiving exhaust from one
or more combustion chambers of the engine;
an oxidation catalyst having an inlet and an outlet, the inlet
of the oxidation catalyst in fluid communication with the first
exhaust system portion and receiving exhaust gases from the one
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or more combustion chambers of the engine, the oxidation
catalyst structured to heat the exhaust gases by oxidizing
unburned hydrocarbons in the exhaust gases;
a second exhaust system portion receiving the exhaust
gases downstream from the outlet of the oxidation catalyst; and
a Rankine waste heat recovery system in thermal
communication with the second exhaust system portion, the
Rankine waste heat recovery system structured to convert heat
from the heated exhaust gases into at least one of mechanical and
electrical energy,
wherein the exhaust system does not include an exhaust
aftertreatment component other than the oxidation catalyst.
15. A method of manufacturing an exhaust system
compnsmg:
providing an exhaust system, an oxidation catalyst
structured to heat exhaust gases by oxidizing unburned
hydrocarbons in the exhaust gases, and a Rankine waste heat
recovery system structured to convert heat from the heated
exhaust gases into at least one of mechanical and electrical
energy;
coupling a portion of the Rankine waste heat recovery
system to a second portion of the exhaust system such that the
portion of the Rankine waste heat recovery system is in thermal
communication with the second portion of the exhaust system;
coupling an inlet of the oxidation catalyst to a first portion
of the exhaust system to receive exhaust gases from a spark-
ignited natural gas engine; and
coupling an outlet of the oxidation catalyst to the second
portion of the exhaust system,
wherein the exhaust system does not include an exhaust
aftertreatment component other than the oxidation catalyst.
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Application 14/507 ,524
PROCEDURAL HISTORY
Independent claim 1 recites an apparatus including an "oxidation
catalyst structured to heat the exhaust gases by oxidizing unburned
hydrocarbons in the exhaust gases." Independent claim 9 recites an exhaust
system including a similarly-recited oxidation catalyst. Independent claim
15 recites a method including the step of "providing ... an oxidation catalyst
structured to heat exhaust gases by oxidizing unburned hydrocarbons in the
exhaust gases." In addition, each independent claim recites "wherein the
exhaust system does not include an exhaust aftertreatment component other
than the oxidation catalyst."
On pages 2 and 3 of the Final Office Action, the Examiner found that
this oxidation catalyst is described by the primary reference, Titus. The
Examiner cited a particular oxidation catalyst described by Titus, identified
by reference numeral 451 in Figures 15 and 16, as evidence of this.
Nevertheless, the Examiner cited no evidence to support the finding that
Titus describes an "oxidation catalyst structured to heat the exhaust gases by
oxidizing unburned hydrocarbons in the exhaust gases," as recited in the
independent claims. (See Final Act. 3, 5 & 7).
In the Appeal Brief, dated September 29, 2017 3 ("App. Br."), the
Appellant argued that "Titus and Mendez do not teach or suggest a Rankine
cycle waste heat recovery system that recovers heat from oxidizing
unburned hydrocarbons by an oxidation catalyst". (See App. Br. 8). The
Appellant argued that this was the case because the term "heat from the
heated exhaust gases," as recited in claim 1, referred back to the limitation,
3 The Appellants filed a substitute Claims Appendix to the Appeal Brief
on October 20, 2017.
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"the oxidation catalyst structured to heat the exhaust gases by oxidizing
unburned hydrocarbons in the exhaust gases," as antecedent basis (see App.
Br. 9); and because Titus taught the recovery of waste heat produced by the
engine, but not of heat produced by oxidizing unburned hydrocarbons in the
exhaust gas (see App. Br. 10). Thus, the Appellant's argument, at least
implicitly, raised the issue whether Titus described an "oxidation catalyst
structured to heat the exhaust gases by oxidizing unburned hydrocarbons in
the exhaust gases," as recited in the independent claims.
On page 3 of the Examiner's Answer, mailed January 29, 2018
("Ans."), the Examiner found, apparently for the first time, that the "claim
limitation[,] 'the oxidation catalyst structured to heat the exhaust gases by
oxidizing unburned hydrocarbons in the exhaust gas[,]' is met by the
reference of Titus as the heating of the exhaust gas is an inherent
characteristic of the exothermic reaction taking place within the catalyst." In
responding to a second argument in the Appellant's Appeal Brief, 4 the
Examiner said that:
Titus teaches an oxidation catalyst which is provided in an
exhaust line of a natural gas engine. The exhaust catalyst will
oxidize unburned hydrocarbons which Titus discloses will be
present in the exhaust gas generated from incomplete
combustion of fuel. Specifically, Titus states[:] "It is also
expected that levels of NOx, CO hydrocarbons, hydrocarbons
4 The Appellants also argued in the Appeal Brief that the subject matter
of the claims would not have been obvious because the subject matter of the
independent claims "exhibit technical advantages that are not realized by
Titus and Mendez, alone or in combination." (App. Br. 11). This argument
is not persuasive. The "technical advantages" touted by the Appellants
resemble the "inventive concept" our reviewing court held insufficient to
distinguish the teachings of the prior art in ACCO Brands Corp. v. Fellowes,
Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016).
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and particulates produced in accordance with the invention can
be significantly lower than emission levels from small diesel
generator power stations[,]" in Column 56, Lines 36-39.
The modification of Titus in view of Mendez would
provide the recovery of waste heat provided from the engine and
the oxidation catalyst due to the position of the waste heat
recovery generator (Mendez 32) downstream of oxidation
catalyst (Titus 451 ). The burning of hydrocarbons present in the
exhaust from uncombusted fuel would provide the benefit of
maximizing the fuel provided to the engine as it is utilized to
provide additional heat to the Rankine waste heat recovery cycle
thereby making the engine system more efficient.
(Ans. 5).
On pages 4 and 5 of the Reply Brief, dated March 21, 2018 ("Reply
Br."), the Appellant responded to the Examiner's findings by denying that
Titus' oxidation catalyst 451 inherently was "structured to heat the exhaust
gases by oxidizing unburned hydrocarbons in the exhaust gases," to use the
language of claim 1. 5 It is on the basis of this argument that I dissent.
TITUS
Titus describes "methods and apparatus for increased conversion of
solid waste materials such as municipal and industrial waste to useful energy
with greatly reduced air pollution." (Titus, col. 2, 11. 60-63). As depicted in
Figure lB, Titus' apparatus includes a furnace or reactor vessel 21 and a
5 Although this argument did not appear in explicit form in the Appeal
Brief, it was not waived. First, as noted earlier, the argument was implicit in
the arguments appearing on pages 8-11 of the Appeal Brief. Even if it had
not been implicit in the Appeal Brief, it was directly responsive to a finding
of inherent disclosure, articulated by the Examiner for the first time in the
Examiner's Answer. As such, it was proper to raise the argument in the
Reply Brief.
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spark-ignited, internal combustion engine 53. (See Titus, col. 9, 11. 50 & 51;
col. 12, 11. 17-20; & col. 12, 11. 30-32; see also id., col. 49, 11. 53-59 & Fig.
12). The furnace 21 encloses arc plasma electrodes 27a, 27b and joule
heating electrodes 24a, 24b. (See Titus, col. 13, 11. 10-17; see also id., col.
51, 11. 6-10 & Fig. 12). According to Titus, the combination of the arc
plasma electrodes 27a, 27b and the joule heating electrodes 24a, 24b heats
waste material 29 sufficiently to subject the waste material to fast pyrolysis.
The fast pyrolysis converts a significant fraction of the waste to a highly
pure, combustible gas usable as fuel by the internal combustion engine 53.
(See Titus, col. 11, 11. 50-53 & col. 48, 11. 16-59). Particularly when water
is added to the furnace to induce water-gas reactions, the resulting
combustible gas will contain only small fractions of hydrocarbons. (See
Titus, col. 50, 11. 9-30 & col. 56, 11. 21-25). More specifically, Titus teaches
that fast pyrolysis of municipal solid waste can yield combustible gases
including approximately 43% hydrogen gas and approximately 44% carbon
monoxide, with a hydrocarbon content no larger than the order of 10%. (See
Titus, col. 48, 11. 16-59; see also id. col. 11, 11. 50-58).
In the apparatus depicted in Figures lB, 12 and 15, the combustible
gas generated by the furnace or waste treatment unit 21/409/441 serves as
fuel for the spark-ignited, internal combustion engine 53/411/449. (See, e.g.,
Titus, col. 50, 11. 24 & 25). Before the combustible gas reaches the engine
53/411 /449, it is purified to remove ash and particulates, as well as sulfur-
and chlorine-containing compounds. (See Titus, col. 50, 11. 18-24; col. 53,
11. 9-16; & col. 55, 11. 16-24). The engine bums the combustible gas to
produce mechanical energy to run a generator used to produce electricity.
(See Titus, col. 50, 11. 25 & 26; col. 53, 11. 54--57; & col. 55, 11. 43--46).
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According to Titus, "exhaust heat from the engine 449 could be used to
provide steam for heating and/or other applications in a cogeneration mode."
(Titus, col. 56, 11. 33-35; see also id., col. 50, 11. 45--48).
Titus teaches exploiting the high hydrogen content, high carbon
monoxide content and low hydrocarbon content of the combustible gas
produced by the furnace to run the spark-ignitable, internal combustion
engine at a low fuel-to-air ratio relative to stoichiometry and at a high
compression ratio, thereby reducing the production of gaseous impurities
such as NOx in the exhaust stream. (See generally Titus, col. 3, 11. 39-54 &
Titus, col. 3, 11. 39-62). In addition, given the low hydrocarbon content of
the combustible gas, Titus teaches that operating the engine at a low fuel-to-
air ratio relative to stoichiometry and at a high compression ratio results in
very complete combustion of the carbon monoxide and the hydrocarbons in
the gas. (See col. 56, 11. 21-27).
During start-up, or at other times when the furnace produces
insufficient combustible gas to run the internal combustion engine, a
supplemental fuel such as natural gas may be used to run the engine. (See
Titus, col. 12, 11. 32--40 & col. 56, 11. 44--56). Nevertheless, Titus suggests
that a supplemental fuel such as natural gas be added directly to the engine
only in sufficiently small quantities that the engine might still be run at or
near the a low fuel-to-air ratio relative to stoichiometry and the high
compression ratio made possible by the use of the hydrogen-rich
combustible gas produced by the furnace. (See Titus, col. 57, 11. 14--17). As
an alternative, Titus describes using a plasma fuel converter to convert the
supplemental fuel to a hydrogen-rich gas before mixing the supplemental
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Application 14/507 ,524
fuel with the combustible gas generated by the furnace. (See Titus, col. 56.
1. 66 - col. 57, 1. 7).
Near the beginning of Titus' disclosure, Titus says that an "additional
objective of the invention is to provide an option to utilize such systems to
reduce carbon monoxide and hydrocarbon emissions by factors of more than
ten by using highly robust and simple oxidation catalysts." (Titus, col. 3, 11.
62---66). To this end, Titus teaches that "[s]upplemental fuel 448 from a fuel
source (e.g. fuel source 458 as shown in FIG. 16) and oxidation catalyst 451
can also be used in accordance with the invention." (Titus, col. 54, 11. 57-
60). Titus elaborates on these statements later in the disclosure:
In addition, hydrocarbon emissions should be very small because
the hydrogen-rich gas typically will contain only a small fraction
of hydrocarbons and it is expected that there will be very
complete combustion of these small levels of hydrocarbons.
Moreover, carbon monoxide (CO) emissions are expected to be
low due to a high degree of combustion of CO. Additional CO
reduction can be obtained by use of a simple oxidation catalyst.
Referring again to FIG. 15 for example, exhaust 450 can be
combined with an oxidation catalysts [sic] 451 to produce low
pollution exhaust 452. Oxidation catalysts suitable for use in the
invention include, but are not limited to, platinum and iridium.
(Titus, col. 56, 11. 21-33).
MENDEZ
Mendez describes an exhaust system for a diesel engine 10 including
both a three-way oxidation catalyst 24 and a selective catalytic reduction
("SCR") catalyst 30. (See Mendez, paras. 30 & 31 ). The three-way
oxidation catalyst oxidizes both carbon monoxide and unburned
hydrocarbons in the exhaust. (See Mendez, para. 4). The SCR catalyst
reduces NOx. (See id.) Thus, the SCR catalyst 30 is an aftertreatment
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Application 14/507 ,524
component other than the oxidation catalyst 2 4. Mendez teaches interposing
a fluid circulation system 3 4 operating in accordance with a Rankine cycle
between the three-way oxidation catalyst 24 and the SCR catalyst 30 in
order to maintain the temperature of the exhaust gases entering the SCR
catalyst within the working temperature range of the SCR catalyst. (See
Mendez, paras. 6, 8 & 32-34).
ANALYSIS
The Examiner finds that the "claim limitation[,] 'the oxidation catalyst
structured to heat the exhaust gases by oxidizing unburned hydrocarbons in
the exhaust gas[,]' is met by the reference of Titus as the heating of the
exhaust gas is an inherent characteristic of the exothermic reaction taking
place within the catalyst." (Ans. 3). 6 The Examiner's only articulated basis
for this finding is that:
Titus teaches an oxidation catalyst which is provided in an
exhaust line of a natural gas engine. The exhaust catalyst will
oxidize unburned hydrocarbons which Titus discloses will be
present in the exhaust gas generated from incomplete
combustion of fuel. Specifically, Titus states[:] "It is also
expected that levels of NOx, CO hydrocarbons, hydrocarbons
and particulates produced in accordance with the invention can
6 Because I find that the Examiner has failed to articulate a sound basis
for belief that Titus' oxidation catalyst 451 was "structured to heat the
exhaust gases by oxidizing unburned hydrocarbons in the exhaust gases," as
recited in claim 1, I need not address the issue whether the Examiner's
finding of inherency, with its potential to shift a burden of production onto
the Appellant, see In re Best, 562 F .2d 1252, 1255 (CCP A 1977), for the
first time in the Answer, after the Appellant's opportunity to submit rebuttal
evidence has closed, is procedurally proper.
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be significantly lower than emission levels from small diesel
generator power stations[,]" in Column 56, Lines 36-39.
The modification of Titus in view of Mendez would
provide the recovery of waste heat provided from the engine and
the oxidation catalyst due to the position of the waste heat
recovery generator (Mendez 32) downstream of oxidation
catalyst (Titus 451 ). The burning of hydrocarbons present in the
exhaust from uncombusted fuel would provide the benefit of
maximizing the fuel provided to the engine as it is utilized to
provide additional heat to the Rankine waste heat recovery cycle
thereby making the engine system more efficient.
(Ans. 5).
The Examiner has the duty to establishing, within the framework of
legally acceptable presumptions and inferences, that Titus discloses or
suggests the use in Titus' exhaust system of an oxidation catalyst inherently
(that is, necessarily) capable of oxidizing unburned hydrocarbons. Cf
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (while
comparing the burdens imposed on Examiners in reexamination and in
original prosecution, our reviewing court said that, in an original
prosecution, "a preponderance of the evidence must show nonpatentability
before the PTO may reject the claims of a patent application"). After
considering the disclosure of Titus as a whole, I am not persuaded that the
Examiner has a sound basis for belief that Titus describes an "oxidation
catalyst structured to heat the exhaust gases by oxidizing unburned
hydrocarbons in the exhaust gas," as recited in claim 1.
As discussed earlier, Titus describes a spark-ignited, internal
combustion engine used to convert combustible gas produced through the
fast pyrolysis of waste such as municipal solid waste into mechanical energy
for use in generating electricity. (See Titus, col. 11, 11. 50-53; col. 48, 11. 16-
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59; & col. 50, 11. 24 & 25). Titus teaches that the combustible gas used is
hydrogen-rich and rich in carbon monoxide. The hydrocarbon content of the
combustible gas is low; and the content of impurities such as particulates,
sulfur-containing compounds and chlorine-containing compounds is reduced
before combustion. (See Titus, col. 11, 11. 50-58; col. 48, 11. 16-59; col. 50,
11. 9--30; col. 53, 11. 9--16 & col. 55, 11. 16-24; & col. 56, 11. 21-25). Titus
teaches exploiting the high hydrogen content, high carbon monoxide content
and low hydrocarbon content of the combustible gas produced by the
furnace to run the spark-ignitable, internal combustion engine at a low fuel-
to-air ratio relative to stoichiometry and at a high compression ratio, thereby
reducing the production of gaseous impurities such as NOx in the exhaust
stream. (See generally Titus, col. 3, 11. 59--61 & col. 54, 11. 13--48). This
mode of operation results in very complete combustion of the small
hydrocarbon content in the combustible gas used by the engine as fuel. (See
Titus, col. 56, 11. 21-27).
As such, I disagree with the Examiner's finding that Titus discloses
"unburned hydrocarbons ... will be present in the exhaust gas" due to
incomplete combustion of fuel. (Ans. 5 (bold type omitted)). Titus appears
to disclose the opposite. Titus' teaching, that "[i]t is also expected that
levels ofNOx, CO hydrocarbons [sic], hydrocarbons and particulates
produced in accordance with the invention can be significantly lower than
emission levels from small diesel generator power stations" (Titus, col. 56,
11. 36-39), does not imply that the level of hydrocarbons in the engine
emissions will be significant relative to any meaningful scale. Because the
levels of unburned hydrocarbons in the emissions from the engine
53/411/449 will be relatively small, Titus has no need to provide an
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Application 14/507 ,524
"oxidation catalyst [ 451] structured to heat the exhaust gases by oxidizing
unburned hydrocarbons in the exhaust gas," as recited in claim 1. (See
Reply Br. 4 & 5).
Titus' engine 449 is not a spark-ignited, natural gas engine in the strict
sense, because it bums the combustible gas generated by the furnace 441
rather than natural gas. Nevertheless, Titus teaches that a limited amount of
natural gas may be used to supplement the combustible gas generated by the
furnace as fuel for the engine 449 during start-up or at other occasions where
sufficient combustible gas is not available. (See Titus, col. 12, 11. 32--40 &
col. 56, 11. 44--56). The amount of natural gas used as supplemental fuel is
limited so as not interfere with the operation of the engine 449 at a low fuel-
to-air ratio relative to stoichiometry and at a high compression ratio. (See
Titus, col. 57, 11. 14--17). Because only a limited amount of natural gas
might be added as supplemental fuel, the natural gas will not necessarily
introduce sufficient hydrocarbons to require the introduction of an
"oxidation catalyst structured to heat the exhaust gases by oxidizing
unburned hydrocarbons in the exhaust gas," as recited in claim 1.
Therefore, nothing in the nature of Titus' exhaust system suggests that
the oxidation catalyst 451 Titus describes is configured to oxidize unburned
hydrocarbons. Although nothing in Titus expressly excludes the possibility
that the catalyst 451 might be configured to oxidize hydrocarbons, such a
possibility does not provide a sound basis for belief that the catalyst
necessarily is so configured. The Examiner has not met the burden to
establish inherency.
The Specification discloses the use of platinum in a substrate for an
oxidation catalyst structured to heat the exhaust gases by oxidizing unburned
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hydrocarbons in the exhaust gas. (See Spec., para. 14). Likewise, Titus
teaches the use ofplatinmn in the oxidation catalyst 451. (See Titus, col. 56,
11. 31-33). This point of similarity does not imply that Titus' oxidation
catalyst 451 is identical, or substantially identical, to that discussed in the
Specification. Neither does this point of similarity imply that Titus'
oxidation catalyst is "structured to heat the exhaust gases by oxidizing
unburned hydrocarbons in the exhaust gas," as recited in claim 1. The
Examiner has not shown that a platinum substrate can only be used in a
three-way catalyst, or a catalyst capable of oxidizing hydrocarbons. Given
the lack of need for an oxidation catalyst structured to heat the exhaust gases
by oxidizing unburned hydrocarbons in the exhaust gas in Titus' exhaust
system, I am not persuaded that Titus' exhaust catalyst necessarily is so
structured.
The Examiner does not appear to provide any other basis than
inherency for finding that Titus teaches or suggests an "oxidation catalyst
structured to heat the exhaust gases by oxidizing unburned hydrocarbons in
the exhaust gas," as recited in claim 1. Furthermore, the Examiner
articulates no reason why the teachings of either Mendez, as applied to
claims 1, 3, 4, 8, 9, 11, 14, 15 and 17, or of Mendez and Ernst in
combination, as applied to claims 2, 10 and 16, would have suggested
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modifying Titus' oxidation catalyst 451 to oxidize unburned hydrocarbons. 7
Therefore, I dissent from my colleagues' affirmance of the rejection of the
appealed claims.
7 Even had the Examiner articulated a reason to modify the exhaust
system described by Titus to include an "oxidation catalyst structured to heat
the exhaust gases by oxidizing unburned hydrocarbons in the exhaust gas,"
as recited in claim 1, Mendez would remain a questionable secondary
reference. Mendez describes an exhaust system for a diesel engine 10
including both a three-way oxidation catalyst 24 and a selective catalytic
reduction ("SCR") catalyst 30. (See Mendez, paras. 30 & 31). The three-
way oxidation catalyst 2 4 oxidizes both carbon monoxide and unburned
hydrocarbons in the exhaust. (See Mendez, para. 4). The SCR catalyst 30
reduces NOx. (See id.) Thus, the SCR catalyst 30 is an aftertreatment
component other than the oxidation catalyst 2 4. Mendez teaches interposing
a fluid circulation system 34 operating in accordance with a Rankine cycle
between the three-way oxidation catalyst 2 4 and the SCR catalyst 3 0 in
order to maintain the temperature of the exhaust gases entering the SCR
catalyst within the working temperature range of the SCR catalyst. (See
Mendez, paras. 6, 8 & 32-34). As the Appellant correctly points out,
Mendez would only have suggested modifying an exhaust system such as
that described by Titus to add a Rankine cycle waste heat recovery system to
if one also wished to add an additional aftertreatment component having a
limited temperature range, such as an SCR catalyst, to the exhaust system.
(See App. Br. 10 & 11; see also Mendez, paras. 6, 8 & 32-34). The
proposed modification would not have satisfied the limitation "wherein the
exhaust system does not include an exhaust aftertreatment component other
than the oxidation catalyst," as recited in each of the appealed independent
claims. Therefore, the combined teachings of Titus and Mendez, at least in
isolation, would not have suggested the subject matter of claim 1, claim 9 or
claim 15, considered as a whole.
16