Ex Parte Gonze et alDownload PDFPatent Trial and Appeal BoardDec 22, 201612828505 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 12/828,505 07/01/2010 Eugene V. Gonze P011706-PTE-CD 6942 74175 7590 12/27/2016 Harness Dickey & Pierce, P.L.C. (GM) P.O. Box 828 Bloomfield Hills, MI 48303 EXAMINER AYALA DELGADO, ANTHONY ART UNIT PAPER NUMBER 3748 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): gm-inbox@hdp.com troymailroom @hdp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUGENE V. GONZE and HALIM G. SANTOSO Appeal 2015-001603 Application 12/828,505 Technology Center 3700 Before LINDA E. HORNER, LISA M. GUIJT, and NATHAN A. ENGELS, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eugene V. Gonze and Halim G. Santoso (Appellants)1 seek our review under 35 U.S.C. § 134 of the Examiner’s decision, as set forth in the Final Action, dated October 3, 2013 (“Final Act.”), rejecting claims 1-3, 6- 8, 10-14, 16-19, and 21-25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellants identify GM Global Technology Operations, Inc. as the real party in interest. Appeal Br. 2. Appellants further identify the United States Department of the Treasury and the UAW Retiree Medical Benefits Trust as having security agreements recorded at the USPTO with regard to this application. Id. Appeal 2015-001603 Application 12/828,505 CLAIMED SUBJECT MATTER Appellants’ claimed subject matter relates to “hydrocarbon adsorbers of an exhaust system.” Spec. para. 1. Claims 1,16, and 25 are the independent claims on appeal. Claim 1 is reproduced below. 1. A regeneration system comprising: a first electronic circuit configured to monitor at least one of (i) a temperature of a first catalyst of a catalyst assembly in an exhaust system of an engine and (ii) an active catalyst volume of the first catalyst; a second electronic circuit configured to select an adsorber regeneration mode and generate a mode signal based on the at least one of the temperature and the active catalyst volume; and a third electronic circuit configured to determine whether the engine is deactivated based on whether fuel injection and ignition of the engine are disabled, wherein the fuel injection and the ignition of the engine are disabled when the engine is deactivated, based on the mode signal and whether the engine is deactivated, cause the engine to be cranked to pump air into an adsorber of the catalyst assembly to regenerate the adsorber while the engine is deactivated, operate the engine as an air pump by cranking the engine until a temperature of the adsorber is greater than a predetermined temperature and regeneration of the adsorber is complete, and cease from operating the engine as an air pump when the temperature of the adsorber is greater than the predetermined temperature and the regeneration of the adsorber is complete. The Examiner relied upon the following evidence in the Final Action: EVIDENCE Hemingway US 5,910,293 US 6,195,985 B1 June 8, 1999 Mar. 6, 2001del Re 2 Appeal 2015-001603 Application 12/828,505 Gotoh Ueno Nakagawa Uchida US 6,209,515 B1 US 2003/0056501 A1 US 6,675,574 B2 US 2009/0183498 A1 REJECTIONS Apr. 3,2001 Mar. 27, 2003 Jan. 13,2004 July 23,2009 The Final Action included the following grounds of rejection: 1. Claims 1-3, 6-8, 10-14, 16-19, and 21-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-3, 6-8, 10-14, 16-19, and 21-25 under 35 U.S.C. § 112, second paragraph, as indefinite. 3. Claims 1, 3, 6, 7, 10, 11, 16, 17, 21-23, and 25 under 35 U.S.C. § 103(a) as unpatentable over Hemingway, del Re, Ueno, and Gotoh. 4. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Hemingway, del Re, Ueno, Gotoh, and Nakagawa. 5. Claims 8, 12-14, 18, 19, 24 under 35 U.S.C. § 103(a) as unpatentable over Hemingway, del Re, Ueno, Gotoh, and Uchida. ANALYSIS Written Description The Examiner determined that Appellants’ Specification lacks adequate support to demonstrate Appellants were in possession of the claimed limitation “active volume of a catalyst,” as recited in independent claims 1 and 16, “configured to estimate ... the active catalyst volume based on an engine speed, a flow rate, and an engine run time,” as recited in claim 2, and “thermal model,” as recited in claim 10. Final Act. 2-6. 3 Appeal 2015-001603 Application 12/828,505 At the outset, we do not sustain this ground of rejection as to independent claim 25, which does not recite any of the claim limitations found by the Examiner as lacking adequate written description support. Appeal Br. 30-31 (Claims App.). Instead, claim 25 recites, in relevant part, “a first electronic circuit configured to monitor at least a temperature of a first catalyst of a catalyst assembly in an exhaust system of the engine.” Id. The Specification describes “[t]he underfloor catalyst monitoring module 186 may directly determine the temperature of the underfloor catalyst via a temperature sensor of the underfloor catalyst.” Spec. para. 56. We find that this description is adequate to demonstrate that Appellants were in possession of the subject matter of claim 25 at the time of the filing of the application. With regard to the remaining claims, Appellants assert “[t]he claims do not recite circuits for generating a thermal model and/or for calculating an active catalyst volume, but rather recite circuits for performing other tasks based on a thermal model and a monitored active catalyst volume.” Appeal Br. 12. Thus, Appellants allege “[a] generation or makeup of a thermal model and/or a description of how to calculate an active catalyst volume are not required.” Id. at 12-13. Appellants further assert the Examiner failed to “provide^ reasons and/or present[] by a preponderance of evidence why a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed.” Id. at 13. 4 Appeal 2015-001603 Application 12/828,505 We disagree with Appellants that satisfying § 112, first paragraph did not require a description of how to generate a thermal model and/or a description of how to calculate an active catalyst volume. Claim 1 recites a circuit “configured to monitor ... an active catalyst volume of the first catalyst.” Similarly, claim 2 recites the circuit is “configured to estimate . . . the active catalyst volume based on an engine speed, a flow rate, and an engine run time.” Dependent claim 10 recites that a fourth electronic circuit is configured to “determine whether regeneration of the adsorber is complete based on a thermal model of the adsorber and the first catalyst, wherein the thermal model comprises an engine speed, a flow rate, an engine run time and a regeneration period of the adsorber.” As noted by the Examiner, these claim elements are directed to a computer-implemented structure (i.e., a circuit) that is programmed to monitor or estimate an active catalyst volume of the first catalyst and a computer-implemented structure (i.e., a circuit) that is programmed to determine whether regeneration of the adsorber is complete based on a thermal model of the adsorber and the first catalyst. Ans. 2. In order for the circuit to perform these steps, the circuit must be programmed, using an algorithm, to detect or discern the active catalyst volume and to apply a thermal model in order to determine whether regeneration of the adsorber is complete. We find that the Examiner met the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. Final Act. 2-6; see also Ans. 2—4. As explained by the Examiner, the Specification points to equations 1 and 2 as the algorithms 5 Appeal 2015-001603 Application 12/828,505 (thermal model) used to estimate the temperature of the underfloor catalyst assembly or the active catalyst volume. Spec. para. 56.2 The Examiner also explains, however, the Specification fails to describe the actual algorithms or equations used in the thermal model. Instead, with reference to the active catalyst volume, equation 2 provides only that the thermal model is a function of one or more listed variables. Id. at paras. 56-57 (listing numerous engine system parameters). Likewise, as noted by the Examiner, the Specification describes only that “[t]he ARC module 48 may determine if regeneration is complete based on a thermal energy model of the adsorber and/or the underfloor catalyst using, for example, equation 3.” Spec. para. 63. Like equation 2, however, equation 3 provides only that the thermal model is a function of one or more listed variables. Id. The Specification fails to provide any example algorithm that could be used in equation 2 or 3 as the disclosed “function.” It is not clear from the written description provided that Appellants were in possession of the thermal model (i.e., an algorithm or function) that could be 2 Appellants argue that at least with respect to claims 1,7, 16, and 21, the claims recite monitoring an active catalyst volume and thus require no description for estimating an active catalyst volume. Reply Br. 3; see also id. at 2 (Appellants arguing that “‘monitor’ means to observe and record activities” and “‘estimate’ means a rough or approximate calculation”). As described infra, the Specification fails to describe any means to discern the active catalyst volume apart from the function used to estimate this volume. The Specification does not describe a sensor or other source for simply observing and recording the active catalyst volume. Thus, despite the fact that some of the claims call for monitoring, as opposed to estimating, the active catalyst volume, we examine the disclosure set forth in the Specification for discerning this volume and find that the Specification lacks an adequate written description. 6 Appeal 2015-001603 Application 12/828,505 used based on the listed parameters to estimate the active catalyst volume of the catalyst or that could be used to determine if regeneration of the adsorber is complete. Appellants argue equations 1-3 of the Specification are examples of thermal models and assert “[t]he thermal model may be represented using other techniques, such as equations, functions, tables, and/or rules.” Appeal Br. 9 (Appellants contending it would be readily understood by one skilled in the art in view of the disclosure provided that “a table may be developed by recording values of predetermined parameters over an operating history of a component.”); see also id. at 11 (Appellants contending “each of the parameters may be directly and/or indirectly determined based on signals from various sensors, relationships to other parameters, equations, tables, etc.” and “[bjased on the disclosed parameters, one skilled in the art would be able to generate a thermal model, as the ability to generate a thermal model of a component is known in the art.”); id. at 11—12 (Appellants arguing “active catalyst volume may be determined based on a table” or using “a 2-D or 3-D simulation of a catalyst” provided by a computer.). All of these alleged facts are not supported in the Specification and are not supported elsewhere in the Record by evidence. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1404 (CCPA 1974). Even were the asserted facts true at the time of filing the brief, i.e., that the active catalyst volume and thermal models could be generated by various methods, we have no evidence in the Record to demonstrate that Appellants were in possession of any of these methods at the time of filing the application. Ariad Pharm., Inc. v. Eli Lilly and Co., 7 Appeal 2015-001603 Application 12/828,505 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc) (“[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). For these reasons, Appellants have not demonstrated error in the Examiner’s rejection of claims 1-3, 6-8, 10-14, 16-19, and 21-24 under 35 U.S.C. § 112, first paragraph as filing to comply with the written description requirement. Accordingly, we sustain the first ground of rejection as to independent claims 1 and 16 and their dependent claims. We do not sustain the first ground of rejection of independent claim 25 for the reasons discussed supra. Indefiniteness The Examiner determined that the recitation in independent claim 1, “a first electronic circuit configured to monitor ... an active catalyst volume,” is unclear because “it[’]s unclear if the first electronic circuit is ‘estimating’ or ‘measuring’ the ‘active catalyst volume.’” Final Act. 6. Independent claim 16 contains similar claim language in the “monitoring” step. Appeal Br. 27 (Claims App.). We do not find the meaning of “monitor” unclear in the claims and thus do not sustain the rejection of the claims based on indefmiteness. In other words, relying on Appellants’ proffered meaning of “monitor” as “to observe and record activities” (Reply Br. 2), we find that the term lacks adequate written descriptive support in the Specification for the reasons discussed supra, but we decline to construe the term “monitor” to mean “estimate” absent an explicit definition in the Specification to that effect. 8 Appeal 2015-001603 Application 12/828,505 For these reasons, we do not sustain the rejection of claims 1-3, 6-8, 10-14, 16-19, and 21-26 under 35 U.S.C. § 112, second paragraph, as indefinite. Obviousness Claim 1 recites, in relevant part, a third electronic circuit configured to: cause the engine to be cranked to pump air into an adsorber of the catalyst assembly to regenerate the adsorber while the engine is deactivated, operate the engine as an air pump by cranking the engine until a temperature of the adsorber is greater than a predetermined temperature and regeneration of the adsorber is complete, and cease from operating the engine as an air pump when the temperature of the adsorber is greater than the predetermined temperature and regeneration of the adsorber is complete. Appeal Br. 23 (Claims App.). Independent claims 16 and 25 contain similar limitations that call for the engine to be cranked to pump air into an adsorber of the catalyst assembly to regenerate the adsorber while the engine is deactivated. Id. at 28, 31. The Examiner found that Hemingway teaches a regeneration system and method substantially as claimed but “is silent on . . . the engine to be cranked to pump air into an adsorber 30 of the catalyst assembly to regenerate the adsorber while the engine is deactivated.” Final Act. 8, 16 (Examiner finding that Hemingway shows an air pump 24 being used to pump air to an adsorber.). The Examiner determined del Re “teaches the use of cranking a deactivated engine in order to supply air into the exhaust, when the engine is not needed to produce power or maintain rotational speed.” Id. at 8, 16 (citing del Re, col. 4,11. 65-67 and col. 5,11. 1-34). 9 Appeal 2015-001603 Application 12/828,505 The Examiner determined: A person having ordinary skill in the art at the time the invention was made would have been motivated in modifying [the] Hemingway engine to operate in a manner that would allow the engine to act as an air pump as taught by [the del] Re reference, as it would be an obvious variant which would yield the same results of supplying air into the exhaust conduit into the adsorber 30 of Hemignways [sic]. Id. at 9; see also Ans. 8 (Examiner stating that the combination “would be a manner of substitution of air pump 24 and control the operation of the engine as an air pump.”). Hemingway teaches a two-step adsorber regeneration method. In a first desorption step, regeneration of the adsorber occurs while the engine is running and once the catalytic converter reaches its light-off temperature. In this first desorption step, lean exhaust gases or supplemental air flow through the adsorber to stimulate the adsorber to desorb the hydrocarbons stored therein and to bum off coke deposits that build up on the adsorber. In a second regeneration step, further regeneration of the adsorber occurs after the engine is deactivated by flowing a fresh air stream through the adsorber to bum off coke, which was deposited in the adsorber after the desorption step. Hemingway, col. 4,1. 52 - col. 5,1. 24; Fig. 2 (purge control 110 and activate pump 116). Hemingway describes that “when the vehicle has keyed-off after operating in conditions in which the catalyst has reached light-off temperature and the adsorber therefore is also at a high temperature, a supplemental air pump is activated, pumping air into the exhaust management system upstream of the adsorber.” Id. at col. 2,11. 39 44. Hemingway discloses “[t]he air flows through the adsorber and comes into 10 Appeal 2015-001603 Application 12/828,505 contact with the hot coke deposits thereon which are oxidized by the air and carried out through the tail pipe.” Id. at col. 2,11. 44-47. Hemingway’s air pump 24 provides secondary air pumped from the engine air intake or from the outside atmosphere through tube 22 and out outlet 20 within passage 16 upstream of adsorber 30. Id. at col. 3,11. 50-55. Hemingway discloses: The activation of air pump 24 at step 116 provides fresh air upstream of the adsorber 30. The fresh air flows through adsorber 30 and combines with carbon deposits on the still hot adsorber 30 allowing the carbon deposits to react with the fresh air and to therefore bum off of the adsorber 30. Id. at col. 5,11. 17-21. Del Re discloses a method of subjecting an internal combustion engine and a catalytic converter to a cleaning phase prior to standstill of the motor to supply any remaining pollutants in the engine to the catalytic converter to reduce the pollutants from the engine prior to a subsequent warm or cold start. Del Re, col. 2,11. 9-28. Del Re discloses that to achieve this cleaning phase, air is supplied to the cylinders of the engine, either by a separate drive means or by allowing the engine to mn out as load free as possible. Id. at col. 2,11. 12-20; Fig. 6, steps SI and S2. As noted by Appellants, in del Re, the engine is “used as an air pump during [an engine mn-down] period to minimize pollutants left in the engine.” Appeal Br. 16; see also Reply Br. 11. Del Re does not disclose using the engine as an air pump to regenerate an adsorber, and Hemingway implies that such a need to use the engine as an air pump is not necessary because the adsorber is at a sufficient operating temperature so that when it mixes with a fresh supply of air from air pump 24, bum off of coke deposits will occur. As such, the Examiner has failed to 11 Appeal 2015-001603 Application 12/828,505 set forth an adequate reason to modify the system of Hemingway to use the engine as an air pump absent impermissible hindsight. Each of the rejections of independent claim 1,16, and 25 rely on the proposed modification of Hemingway to use the engine as an air pump, based on the teaching of del Re. For the reasons provided supra, we do not sustain the rejection of independent claims 1,16, and 25, or their dependent claims 3, 6, 7, 10, 11, 17, and 21-23, under 35 U.S.C. § 103(a) as unpatentable over Hemingway, del Re, Ueno, and Gotoh. The remaining grounds of rejection based on obviousness of the subject matter of dependent claims 2, 8, 12-14, 18, 19, and 24 likewise rely on impermissible hindsight in the proposed modification of Hemingway with the teaching of del Re. As such, for the same reasons provided supra, we do not sustain the rejections under 35 U.S.C. § 103(a) of claim 2 as unpatentable over Hemingway, del Re, Ueno, Gotoh, and Nakagawa and of claims 8, 12-14, 18, 19, and 24 as unpatentable over Hemingway, del Re, Ueno, Gotoh, and Uchida. DECISION The decision of the Examiner to reject claims 1-3, 6-8, 10-14, 16-19, and 21-24 under 35 U.S.C. § 112, first paragraph is AFFIRMED. The decision of the Examiner to reject claim 25 under 35 U.S.C. § 112, first paragraph is REVERSED. The decision of the Examiner to reject claims 1-3, 6-8, 10-14, 16-19, and 21-25 under 35 U.S.C. § 112, second paragraph is REVERSED. 12 Appeal 2015-001603 Application 12/828,505 The decision of the Examiner to reject claims 1-3, 6-8, 10-14, 16-19, and 21-25 under 35 U.S.C. § 103(a) is 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 13 Copy with citationCopy as parenthetical citation