10600571 - (D) (P.T.A.B. Mar. 5, 2013)

Ex Parte Hori et al

Patent Trials and Appeals BoardMar 5, 2013

10600571 - (D) (P.T.A.B. Mar. 5, 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. 10/600,571 06/23/2003 Masao Hori HARA-072-046 9645 20374 7590 03/06/2013 KUBOVCIK & KUBOVCIK SUITE 1105 1215 SOUTH CLARK STREET ARLINGTON, VA 22202 EXAMINER TRAN, DIEM T ART UNIT PAPER NUMBER 3748 MAIL DATE DELIVERY MODE 03/06/2013 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 MASAO HORI, AKIHISA OKUMURA, and MAKOTO HORIUCHI ____________ Appeal 2010-011676 Application 10/600,571 Technology Center 3700 ____________ Before GAY ANN SPAHN, ANNETTE R. REIMERS, and WILLIAM A. CAPP, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge WILLIAM A. CAPP. Opinion Dissenting filed by Administrative Patent Judge GAY ANN SPAHN. CAPP, Administrative Patent Judge. DECISION ON APPEAL ____________ STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 17-19, 21, 22, 24, 25 and 29 as unpatentable under 35 U.S.C. § 103(a) over Katoh (US 5,402,641, issued Apr. 4, 1995) and Ozawa Appeal 2010-011676 Application 10/600,571 - 2 - (US 5,075,276, issued Dec. 24, 1991). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ invention relates to a method for purifying exhaust gas for gasoline engines. Spec. 1. Claim 17, reproduced below, is illustrative of the subject matter on appeal. 17. A process for purifying exhaust gas from a gasoline engine of a fuel-direct-injection type, using an exhaust gas purifying catalyst containing a noble metal and a transition metal and which removes hydrocarbons, carbon monoxide and nitrogen oxides from the exhaust gas, comprising providing the gasoline engine of the fuel-direct-injection type; directly injecting gasoline into a cylinder of the gasoline engine of a fuel-direct-injection type to provide a mixture of air and gasoline having an air-fuel ratio of 13 to 15 and combusting the mixture to form an exhaust gas in a first exhaust gas state having an exhaust-gas temperature in a range of 350oC to 800oC at an inlet to the catalyst; the catalyst being obtained by mixing the noble metal and the transition metal with or carrying the noble metal and the transition metal by a fire-resistant inorganic oxide having a BET surface area of 50 m2/g to 200 m2/g and having a pore diameter of 10 nm to 30 nm, an amount of the noble metal being in a range of 0.01 g/liter to 50 g/liter with respect to catalyst volume, the fire-resistant inorganic oxide being α-alumina, active alumina, titania, zirconia, or a composite oxide of α-alumina, active alumina, titania, and zirconia, contacting the exhaust gas in the first exhaust gas state with the catalyst to remove hydrocarbons, carbon monoxide and nitrogen oxides from the first exhaust gas and purify the first exhaust gas; directly injecting gasoline into the cylinder of the gasoline engine of a fuel-direct-injection type to provide a mixture of air and gasoline having an air-fuel ratio of more than 15 to 50 and combusting the mixture to form an exhaust gas in a second exhaust Appeal 2010-011676 Application 10/600,571 - 3 - gas state having an exhaust-gas temperature in a range of 200°C to 350°C at the inlet to the catalyst; and contacting the exhaust gas in the second exhaust gas state with the catalyst to remove hydrocarbons, carbon monoxide and nitrogen oxides from the second exhaust gas and purify the second exhaust gas. OPINION Appellants argue claims 17-19, 21, 22, 24, 25 and 29 as a group. App. Br. 5-9. We select claim 17 as representative of the group. Claims 18-19, 21, 22, 24, 25 and 29 stand or fall with claim 17. See 37 C.F.R. § 41.37(c)(1)(iv) (2012). The Examiner finds that Katoh discloses a process for purifying exhaust gas from lean burning internal combustion engines using an exhaust gas purifying catalyst containing a noble metal (platinum) and a transition metal (copper). Ans. 4. The Examiner also finds that Katoh’s gasoline engine operates at a rich air-fuel ratio of 13 to 15 in connection with a first exhaust gas state and corresponding temperature as claimed. Id. The Examiner further finds that Katoh’s engine operates at a lean air-fuel ratio of more than 15 to 50 in connection with a second exhaust gas state and corresponding temperature as claimed. Id. The Examiner finds that Katoh’s exhaust gas in the respective first and second exhaust gas states contacts the catalyst to remove hydrocarbons, carbon monoxide, and nitrogen oxides to purify the exhaust gases in their respective states. Ans. 4-5. The Examiner finds that Katoh fails to disclose that the amount of the noble metal ranges between 0.01 to 50 g/liter and a BET surface area and pore diameter as claimed. Id. The Examiner relies on Ozawa as teaching a platinum coating with a density range of 0.01 to 5 g/liter of catalyst volume. Id. The Examiner further finds, and Appellants do not dispute, that Ozawa’s Appeal 2010-011676 Application 10/600,571 - 4 - catalyst is a fire-resistant inorganic oxide (gamma alumina) with a BET surface area of 50-200 m2/g and with a pore diameter of 10-30 nm. Ans. 5- 6. The Examiner concludes that it would have been obvious to one having ordinary skill in the art at the time of the invention to have utilized Ozawa’s platinum density and inorganic oxide in the catalyst of Katoh as it would have provided a highly efficient catalyst for removing HC, CO, and NOx emissions in the exhaust gas. Ans. 6. The Examiner further finds that Katoh fails to disclose a fuel-direct- injection engine. Ans. 5, 8. However, the Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to apply the exhaust gas purification teachings of Katoh to a gasoline fuel-direct-injection engine, since the recitation of fuel-direct- injection amounts to a statement of intended use. Ans. 5. Specifically, the Examiner notes that gasoline internal combustion engines, both of the “fuel- direct-injection” type and the “carburetor-injection” type, each generate exhaust gases containing harmful emissions of HC, NOx, soot, CO, and SOx that require purification before the gases can be released to the atmosphere. Ans. 5, 7-8. Thus, the Examiner reasons that even if Katoh’s engine is a carburetor-injection type, the engine still generates harmful HC, NOx, soot, CO, and SOx emissions, and concludes that the mere selection of the purification process of Katoh for use in a gasoline fuel-direct-injection engine would be well within the level of ordinary skill in the art. Ans. 5, 8. Appellants argue that Katoh fails to disclose a direct-injection type engine. App. Br. 5. However, Appellants offer neither evidence nor argument to rebut the Examiner’s conclusion that it would have been obvious to adapt Katoh’s process from a carburetor-injection engine to a Appeal 2010-011676 Application 10/600,571 - 5 - fuel-direct-injection engine. Ans. 8.1 Moreover, Appellants do not challenge the Examiner’s characterization of the recitation of fuel-direct- injection in claim 17 as a statement of intended use. Internal combustion engines “breathe.” They ingest a mixture of hydrocarbon fuel and air, ignite the mixture in controlled combustion, and then exhaust the combustion by- products in the direction of the catalytic converter and the tail-pipe. Appellants’ invention is directed to purification treatment of the exhaust gas. Appellants have not rebutted the Examiner’s finding and conclusion that the claimed purification process on the exhaust side of the engine does not depend on the manner in which hydrocarbon fuel is ingested on the intake side of the engine.2 Thus, using an exhaust purification system for a carburetor-injection engine on a fuel-direct-injection engine amounts to a mere change in use. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not a make a claim to that old product patentable”). Next, Appellants argue that Katoh’s NOx absorbent is not a catalyst within the meaning of Claim 17. App. Br. 9. We disagree. Figures 3a and 3b of Katoh illustrate the NOx absorption and release mechanism of the NOx 1 Katoh, moreover, does appear to disclose fuel injection. Annotated feature 16 in Figure 1 is described as an Electronic Control Fuel Injection Valve. See Katoh, Col 5. ll. 18-22; See also Figs. 9-14, 16, 17. We were unable to find any express mention of carburetion in Katoh’s specification. 2 As persons of scientific competence in the fields in which they work, examiners are responsible for making findings, informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art and the motivation those references would provide to such persons. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. Id. Appeal 2010-011676 Application 10/600,571 - 6 - absorbent. The chemical reaction is described in further detail in Column 4. See ll. 14-28. The NOx absorbent is further described as follows: The NOx absorbent 6 includes a carrier 6c of, for example, alumina (Al2O3) and at least one element 6b selected from the group consisting of (a) noble metal catalyst 6a having oxidizing and reducing abilities, for example platinum (Pt) and a mixture of platinum and rhodium (Rh), (b) alkaline earth, for example barium (Ba), (c) rare-earth, for example lanthanum (La), and (d) alkaline metal, for example kalium (K), or an oxide of the element, each carried by the carrier 6c. The above described element 6b carried by the carrier 6c may be replaced by a transition metal, for example copper (Cu). Katoh, Col 3, l. 61 – Col. 4, l. 3. In comparison, Appellants’ catalyst includes one or more noble metals (including platinum and rhodium) as well as one or more transition metals (including copper). Spec. 8. In short, the chemical constituents of Appellants’ catalyst include essentially the same chemical constituents of Katoh’s NOx absorbent. Furthermore, Katoh’s NOx absorbent is not ultimately consumed or chemically altered by its reaction with the NOx exhaust gas pollutants. Thus, we agree with the Examiner that Katoh’s NOx absorbent is a catalyst within the meaning of claim 17. Next, Appellants argue that Katoh does not disclose first and second exhaust gas states wherein the first state is associated with a rich or stoichiometric air-fuel ratio and an exhaust gas temperature above 350oC and the second state is associated with a lean air-fuel ratio and an exhaust gas temperature of below 350oC. App. Br. 6-7. The Examiner responds by stating that Figure 5 and lines 25-26 of column 5 of Katoh disclose the two claimed gas states. Ans. 8-9. Generally, Katoh discloses a system for reducing exhaust gas pollution by employing an Engine Control Unit to alternate the air-fuel ratio Appeal 2010-011676 Application 10/600,571 - 7 - between: (1) a rich to stoichiometric mixture; and (2) a lean ratio. Abstract. In the embodiment disclosed in Figure 5, the ECU determines whether the air-fuel ratio is rich or lean. Fig 5, Step 104. If the air-fuel ratio is lean (i.e., greater than 14.7 air-fuel ratio), the ECU determines whether the exhaust gas temperature is above or below 550oC. Fig. 5, Step 106. If the temperature is above 550oC, the ECU directs the fuel injection system to alternate between rich and lean air-fuel ratios in order to recover the NOx absorbent. Col. 6, ll. 5-11. Alternatively, when the exhaust gas is not in a condition of a lean air- fuel ratio and high temperature (e.g., either rich or lean but below 550oC), the ECU by-passes the alternating rich and lean air-fuel protocol step and returns to the start of the routine. Figure 5 (Steps 112, 100). Thus, for purposes of reading claim 17 onto Katoh, if the air-fuel ratio is lean and the exhaust temperature is already below 350oC, Katoh’s ECU will not direct a rich to stoichiometric mixture. On the other hand, if the air- fuel ratio is lean and the exhaust gas temperature is at or above 550oC, the ECU will direct the fuel injection system to periodically inject a rich to stoichiometric mixture. Thus, Katoh satisfies the two exhaust gas state limitations of claim 17. The fact that Katoh’s ECU does not direct alternating rich and lean air-fuel ratios at temperatures above 350oC but less than 550oC is of no consequence as claim 17 is an open ended claim with a “comprising” transition phrase and thus does not preclude an exhaust gas state between 350-550oC. Appellants argue that Katoh only discloses temperature ranges above and below 550oC. App. Br. 7. Appellants argue that nothing in Katoh suggests that a person of ordinary skill in the art would have been motivated to control the engine of Katoh so as to inject a lean fuel mixture to produce Appeal 2010-011676 Application 10/600,571 - 8 - an exhaust gas temperature in a range of 200oC to 350oC. App. Br. 8. However, Appellants have admitted that it was known in the art to operate at a lean burn mode that produces exhaust temperatures of 200-350oC. Spec. 1-2, Background of the Invention. Moreover, Appellants also admit that it was known in the art to operate at a rich to stoichiometric air-fuel ratio during high-load operation such as accelerating, passing and slope-climbing and that such conditions produce exhaust gas temperatures in the range of 300-800oC. Spec. 2. There is, therefore, nothing patentably novel about achieving the two, respective temperature ranges recited in claim 17. Appellants merely claim that their recited process operates effectively within each of two typical operating conditions previously known in the art. Appellants have not shown error in the Examiner’s finding that Katoh also purifies exhaust gas under similar operating conditions. Finally, Appellants argue that Katoh and Ozawa cannot be combined because Katoh discloses a NOx absorbent, while Ozawa discloses a catalyst. App. Br. 8-9. We find this argument unpersuasive for the same reason where we agreed with the Examiner that Katoh’s NOx absorbent is a catalyst, supra. We also reject this argument because Katoh and Ozawa both disclose platinum and the Examiner merely relied on Ozawa as disclosing the claimed density of the platinum. Ans. 6. We have considered the Appellants’ remaining arguments and find them to be unpersuasive. Appellants have failed to apprise us of error in the Examiner’s findings and conclusions. Accordingly, we sustain the Examiner’s rejection of claims 17-19, 21, 22, 24, 25 and 29. Appeal 2010-011676 Application 10/600,571 - 9 - DECISION The decision of the Examiner to reject claims 17-19, 21, 22, 24, 25 and 29 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)(1)(iv). AFFIRMED peb Appeal 2010-011676 Application 10/600,571 - 1 - SPAHN, Administrative Patent Judge, dissenting. I do not join in the majority opinion. In particular, I do not share the view of my colleagues that the Examiner established a prima facie case of obviousness in order to shift the burden to Appellants to come forward with arguments and/or evidence to rebut the prima facie case. See In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case). Independent claim 17 is directed to “[a] process for purifying exhaust gas from a gasoline engine of a fuel-direct-injection type, using an exhaust gas purifying catalyst.” The process includes, inter alia, the steps of “providing the gasoline engine of the fuel-direct-injection type” and with respect to first and second exhaust gas states, “directly injecting gasoline into a cylinder of the gasoline engine of a fuel-direct-injection type”. The Examiner found that “Katoh et al. discloses the claimed invention except for applying the invention to a gasoline fuel-direct-injection type engine.” Ans. 5. The Examiner concluded that it would have been obvious to one of ordinary skill in the art “to apply the invention of Katoh . . . to a gasoline fuel-direct-injection type engine, since the recitation of such amounts to an intended use statement.” Id. The Examiner further concluded that because both [a] ‘gasoline-fuel-direct-injection engine’ and [Katoh’s] ‘gasoline carburetor-injection engine[s]’ generate exhaust gases containing harmful emissions of HC, NOx, soot, CO, and SOx, that require purification before the gases can be released to the atmosphere[,] . . . the mere selection of the purification process of Katoh . . . for use in a gasoline fuel-direct-injection engine would be well within the level of ordinary skill in the art. Appeal 2010-011676 Application 10/600,571 - 2 - Id. The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason or reasons why the claimed invention would have been obvious. In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007), the Supreme Court noted that the analysis supporting a rejection under 35 U.S.C. § 103 should be made explicit. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the present case, the Examiner has failed to articulate any reason with a rational underpinning as to why it would have been obvious to one of ordinary skill in the art to modify Katoh to arrive at the claimed invention. The Examiner’s statements of “since the recitation of [a gasoline engine of fuel-direct-injection type] amounts to an intended use statement” and “the mere selection of the purification process of Katoh . . . for use in a gasoline fuel-direct-injection engine would be well within the level of ordinary skill in the art” do not provide a reason with a rational underpinning as to why it would have been obvious to one of ordinary skill in the art “to apply the invention of Katoh . . . to a gasoline fuel-direct-injection type engine.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006) (The examiner must articulate some “reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Appeal 2010-011676 Application 10/600,571 - 3 - Instead, the first statement is merely the Examiner’s flawed interpretation that the disputed claim language is intended use. My colleagues explain why they agree that “using an exhaust purification system for a carburetor-injection engine on a fuel-direct-injection engine amounts to a mere change in use.” I cannot agree that the recitations of a “gasoline engine of a fuel-direct-injection type” in the preamble and in three steps in the body of claim 17 are recitations of intended use. Rather, claim 17’s recitation of a “gasoline engine of a fuel-direct-injection type” is a limitation that the combination of the Katoh and Ozawa references must disclose. The second statement is merely the Examiner’s opinion as to level of skill in the art. Although the Examiner concludes that it would have been obvious to one of ordinary skill in the art “to apply the invention of Katoh et al. to a gasoline fuel-direct-injection type engine,” the Examiner has not cited a reference teaching a gasoline engine of fuel-direct-injection type, nor made a finding that a gasoline engine of fuel-direct-type is well known in the art. This evidences that the Examiner’s rejection lacks the required factual basis to support the legal conclusion of obviousness. My colleagues state that “[i]nternal combustion engines ‘breathe,’” and “[t]hey ingest a mixture of hydrocarbon fuel and air, ignite the mixture in controlled combustion, and then exhaust the combustion by-products in the direction of the catalytic converter and the tail-pipe.” Decision 5. However, my colleagues do not provide a citation to anywhere in the record as support for these statements. My colleagues also state that “Appellants have not rebutted the Examiner’s finding and conclusion that the claimed purification process on the exhaust side of the engine does not depend on the manner in which hydrocarbon fuel is ingested on the intake side of the Appeal 2010-011676 Application 10/600,571 - 4 - engine.” Id. Again my colleagues do not provide any citation for where in the record the Examiner made this finding and conclusion and I could not locate anywhere in the record that the Examiner made this finding and conclusion. In response to my colleague’s footnote 2, I agree that an Examiner’s findings as to the meaning of prior art references to persons of ordinary skill in the art and the motivation those references would provide to such persons can establish a prima facie case of obviousness according to Berg; however, in the present case, the Examiner has failed to make those necessary findings and to adequately articulate a motivation. Id. As stated above, the Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. § 103 should be made explicit. KSR, 550 U.S. at 401. My colleagues appear to be reading into the record findings and conclusions that were not explicitly made by the Examiner. Moreover, a thorough review of the Katoh and Ozawa references reveals that neither Katoh nor Ozawa provide any support for the Examiner’s proffered rationales as to why it would have been obvious to one of ordinary skill in the art to apply Katoh’s process to a gasoline engine of fuel-direct-injection type. The mere fact that both Katoh’s internal combustion engine 2 and a gasoline engine of fuel-direct-injection type generate exhaust gases containing harmful emissions of HC, NOx, soot, CO, and SOx that require purification before the gases can be released to the atmosphere is not sufficient, without more, to establish that it would have been obvious to apply Katoh’s process to a gasoline engine of fuel-direct- injection type. For example, our reviewing court has stated that the “mere fact that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the Appeal 2010-011676 Application 10/600,571 - 5 - modification.” See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). In the present case, neither Katoh nor Ozawa suggest any desirability for application of Katoh’s purification process to a gasoline engine of fuel- direct-injection type. The majority has not persuaded me that the Examiner’s rejection articulates a reason with a rational underpinning as to why it would have been obvious to one of ordinary skill in the art to modify Katoh’s process to include or be used in a gasoline engine of fuel-direct-injection type in order to shift the burden to Appellants to come forward with arguments and/or evidence to rebut the prima facie case. Inasmuch as the majority’s analysis has not persuaded me that the Examiner established a prima facie case of obviousness in order to affirm the rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Katoh and Ozawa, I would reverse the Examiner’s rejection and I respectfully dissent.