Ex Parte Handler et al

Patent Trial and Appeal Board

Jun 21, 2013

11517865 (P.T.A.B. Jun. 21, 2013)

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.
11/517,865 09/07/2006 Torsten Handler 10191/4691 2867
26646 7590 06/24/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
BOGUE, JESSE SAMUEL
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
06/24/2013 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 TORSTEN HANDLER, CHRISTIAN WALZ and
MATTHIAS LOEHR
____________________

Appeal 2011-005732
Application 11/517,865
Technology Center 3700
____________________

Before: JOHN C. KERINS, SCOTT A. DANIELS and
JILL D. HILL, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005732
Application 11/517,865
2
STATEMENT OF THE CASE
Torsten Handler, Christian Walz, and Matthias Loehr (Appellants)
appeal under 35 U.S.C. § 134 from the rejections of claims 1-7. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a method for operating an internal
combustion engine and device for implementing the method. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for operating an internal combustion engine in
whose exhaust-gas region at least one SCR catalytic converter
is situated, the method comprising:
acting upon the SCR catalytic converter by a reagent
contributing to an NOx conversion in the SCR catalytic
converter; and
controlling a reagent level in the SCR catalytic converter to
a predefined reagent setpoint level,
wherein the predefined reagent setpoint level is specified to
a value greater than a maximum value, and wherein the
maximum value corresponds to the SCR catalytic converter
completely filled with the reagent.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schmelz
Itoh
US 5,628,186
US 7,086,223 B2
May 13, 1997
Aug. 8, 2006

Appeal 2011-005732
Application 11/517,865
3
REJECTIONS
The Examiner made the following rejections:
Claims 1, 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Itoh. Ans. 3-4.
Claims 1-4, 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schmelz. Ans. 5.

ANALYSIS
Rejection I
Claims 1, 5 and 6 as unpatentable over Itoh.
The Examiner found that Itoh discloses each of the claimed steps of
independent claim 1 except for specifying an optimum value of the
predefined reagent setpoint level “to a value greater than a maximum value,
and wherein the maximum value corresponds to the SCR catalytic converter
completely filled with the reagent.” Ans. 4. The Examiner determined that
the reagent setpoint level is a result effective variable and reasoned that it
would have been “obvious to one having ordinary skill in the art at the time
the invention was made to provide a specific optimum value of predefined
reagent setpoint level.” Id.
Appellants argue that the Examiner’s determination of obviousness
lacks a rational basis and is insufficient because the Examiner has not
explained “(i) why a value greater than the maximum value would be
optimal; and (ii) why one of ordinary skill in the art, at the time of the
invention, would have recognized that a value greater than the maximum
value would be optimal.” App. Br. 4-5. Reply Br. 3. Appellants assert that
one of skill in the art would not allow the setpoint level to exceed the
maximum capacity level of the catalytic convertor because of reagent
Appeal 2011-005732
Application 11/517,865
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slippage.1 App. Br. 5, Reply Br. 3-4. Appellants assert that the Examiner’s
position is further undermined by the cited Itoh and Schmelz references
which never permit the storage capacity of the catalytic converter to reach
the maximum value because of the increased propensity for undesirable
reagent slippage, and that the references are in fact evidence that the claimed
reagent setpoint level is not an optimum value of a result effective variable
which involves only routine skill in the art. App. Br. 5, Reply Br. 3.
As noted by the Examiner, Itoh discloses the reagent level as a result
effective variable recognized by those of ordinary skill as a basis upon
which an amount of nitrogen oxide (NOx) in vehicle exhaust gas is reduced.
Ans. 4 and see Itoh, col. 1, ll. 18-43. Based on this, the Examiner reasoned
that a reagent setpoint level above the maximum value of reagent completely
filling the catalytic converter, was “an optimum value of a result effective
variable involv[ing] only routine skill in the art.” Ans. 4. What the
Examiner’s reasoning lacks however is an explanation of why a reagent
setpoint level above the maximum value, is an optimal value. 2
The Examiner explains that Itoh injects reagent into the exhaust path
until the reagent setpoint is equal to a maximum value, and that setting the
reagent level below or equal to the maximum level prevents slippage and
avoids polluting the environment with harmful reagent emissions. Ans. 4, 7
citing Itoh, col. 12, ll. 39-49 and Fig. 10. This does not explain, however,

1 Appellants’ Specification explains “reagent slippage” as essentially an
excess or oversupply of reagent to the catalytic converter, where “the dosage
is too high, reagent slippage occurs, which not only results in an
unnecessarily high reagent use but also in an unpleasant smell as a function
of the reagent's composition.” Spec. 1, ll. 21-23.
2 Our use of the term “maximum value” in the opinion refers to the
maximum value of reagent completely filling the catalytic converter as
called for in claim 1.
Appeal 2011-005732
Application 11/517,865
5
why one of skill in the art would set the reagent level above the maximum
value, nor why it would be an optimal value. The Examiner has failed to
establish from this reasoning that one of ordinary skill in the art would
recognize a reagent setpoint above the maximum level as an optimized result
effective variable, particularly where Itoh discloses the reason to maintain
the reagent level below or at the maximum value is to reduce reagent
slippage and environmental damage.
The Examiner’s position that Itoh is capable of having the injection of
reagent exceed the maximum level does not clarify why the reagent setpoint
would be optimized above the maximum level. Ans. 8. Just because the
level of reagent supplied can exceed the maximum amount of reagent that
can be stored in the catalytic converter does not provide an explanation as to
why it would have been obvious to modify the reagent setpoint level to a
value above the maximum level. Further, as discussed supra and noted by
the cited references, one skilled in the art would not define a setpoint above
this maximum level because of the problem of reagent slippage.
Accordingly, we do not sustain the rejection of claims 1, 5 and 6 as
unpatentable in view of Itoh.
Rejection II
Claims 1-4, 6 and 7 as unpatentable over Schmelz
Similar to Itoh, the Examiner found that Schmelz discloses all the
elements of claim 1 with the exception of a reagent setpoint level greater
than a maximum value of the completely filled catalytic converter. Ans. 5.
The Examiner again reasoned that a setpoint level above the maximum value
of reagent completely filling the catalytic converter, was “an optimum
value” which would be obvious to one having ordinary skill in the art. Ans.
6.
Appeal 2011-005732
Application 11/517,865
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As discussed above with respect to Itoh, the Examiner’s reasoning
does not explain why, based on Schmelz, one of skill in the art would set the
reagent level above the maximum value, nor why it would be an optimal
value particularly in light of the disclosure in Schmelz that such a level of
reagent is undesirable. See Schmelz col. 8, l. 53 - col. 9, l. 6. We agree with
Appellants that for Schmelz, as well as for Itoh, the Examiner’s reasoning
that it is obvious to set the reagent level equal to or less than a maximum
value because the reagent level at or below the maximum level is a result
effective variable does not explain why someone of skill in the art would
provide, or optimize, a setpoint above the maximum value. Reply Br. 4 and
see Ans. 7. For the same reasons set forth above with respect to Itoh, we
similarly do not sustain the rejection of claims 1-4, 6 and 7 as obvious over
Schmelz.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-7 as
unpatentable over Itoh and/or Schmelz, are REVERSED.

REVERSED

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