Ex Parte Kesch et al

Board of Patent Appeals and Interferences

Mar 26, 2009

11029240 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BERND KESCH, DETLEF HEINRICH, ACHIM GUENTHER,
CHRISTOF THIEL, JUERGEN FOERSTER
____________________

Appeal 2009-0616
Application 11/029,240
Technology Center 3700
____________________

Decided:1 March 26, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-0616
Application 11/029,240

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5 and 7-9. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a method for diagnosing a secondary air
system of an internal combustion engine.
Claim 1 is illustrative of the claimed subject matter and is reproduced
below:

1. A method for diagnosing a secondary air system of an
internal combustion engine, which introduces secondary air into
an exhaust-gas region of the engine, the secondary air
exothermically reacting together with combustible exhaust-gas
components, and thermoreactor [sic] being formed in a reaction
region, the method comprising:
ascertaining and evaluating a measure of the secondary
air from a thermal behavior in the thermoreactor;
comparing the measure of the secondary air to at least
one threshold value; and
generating at least one diagnostic signal as a function of a
comparison result.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Araki 5,404,719 Apr. 11, 1995
Mizuno 6,029,441 Feb.29, 2000
Baeuerle US 6,463,732 B2 Oct. 15, 2002
Ziemba US 6,637,191 B1 Oct. 28, 2003
Tamura US 2003/0074891 A1 Apr. 24, 2003
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Claims 1 to 3 and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Baeuerle. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Baeuerle in view of Araki. Claim 5 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Baeuerle in view of Tamura. Claim
8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Baeuerle in
view of Mizuno. Claim 9 was rejected under 35 U.S.C. § 103(a) as
unpatentable over Baeuerle in view of Ziemba. Claim 6 stands allowed.

ISSUE
Have Appellants established that the Examiner has erred by rejecting
claim 1 because taking a temperature measurement in a catalytic converter,
located downstream of the secondary air combustion region, as is performed
by Baeuerle, does not meet the limitation, “ascertaining and evaluating a
measure of the secondary air from a thermal behavior in the thermoreactor?”

FINDINGS OF FACT
1. Baeuerle discloses a method for diagnosing a secondary air system of an
internal combustion engine (col. 3, ll. 9-16), which introduces secondary
air (via 10) into an exhaust-gas region (at 8) of the engine, the secondary
air exothermically reacting together with combustible exhaust-gas
components (col. 1, ll. 24-27; col. 4, ll. 32-37), and a thermoreactor being
formed in a reaction region (at 7, 8), the method comprising: ascertaining
and evaluating a measure (Tact) of the secondary air (i.e., effectiveness as
a heating measure M) from a thermal behavior (i.e., combustion) in the
thermoreactor 2.3 (col. 4, ll. 31-42); comparing the measure (Tact) of the
secondary air to at least one threshold value (Tmodel, S); and generating at
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least one diagnostic signal as a function of a comparison result (2.8; col.
4, l. 64 – col. 5, l. 6).

PRINCIPLES OF LAW
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir.1987).
Although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
Where no explicit definition for a term is given in the specification,
the term should be given its ordinary meaning and broadest reasonable
interpretation. E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d
1364, 1368 (Fed. Cir. 2003). The ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). An applicant is
entitled to be his or her own lexicographer and may rebut the presumption
that claim terms are to be given their ordinary and customary meaning by
clearly setting forth a definition of the term that is different from its ordinary
and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
While it is always preferable for the factfinder to specify the level of
skill it has found to apply to the invention at issue, the absence of specific
findings on the level of skill in the art does not give rise to reversible error
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where the prior art itself reflects an appropriate level and a need for
testimony is not shown. Okajima v. Bourdeau 261 F.3d 1350, 1355 (Fed.
Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
F.2d 158, 163 (Fed.Cir.1985)).

ANALYSIS
Baeuerle discloses each and every element of claim 1 (Fact 1).
Appellants’ argue that Baeuerle does not disclose, “ascertaining and
evaluating a measure of the secondary air from a thermal behavior in the
thermoreactor” because, firstly, the catalytic converter of Baeuerle cannot
reasonably be construed as the claimed “thermoreactor” and secondly,
Baeuerle’s step of ascertaining a temperature in the catalytic converter,
which Appellants argue should be construed as downstream from the
thermoreactor, cannot reasonably be construed as ascertaining and
evaluating a measure of the secondary air from a thermal behavior “in” the
thermoreactor. This argument is not persuasive for several reasons.
Appellants specifically define “thermoreactor” to mean “a region in
the exhaust-gas system of the internal combustion engine, in which an
exothermic reaction of combustible exhaust-gas components with the
introduced secondary air takes place.” Spec. p. 2, ll. 14-18. The
Specification further provides that “‘thermoreactor’ is not to be understood
as a specific component.” Spec. p. 2, ll. 18-19. Appellants argue that the
exothermic reaction in Baeuerle takes place in the catalytic converter. Br. p.
9. Even if this were the case, using Appellants’ own definition, a person of
ordinary skill in the art would readily appreciate that the catalytic converter
of Baeuerle would be the claimed, “thermoreactor.” Appellants do not point
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to any claim limitation which precludes such an interpretation but instead
cite the location of the thermoreactor in the Specification and drawings. Br.
p. 8. Although the Specification and drawings provide that a catalytic
converter “may” be provided downstream of the thermoreactor region (Spec.
p. 8, l. 4-6) the explicit definition of “thermoreactor” provided in the
Specification does not limit the thermoreactor to such a specific location. To
the contrary, the definition is indicative of Appellants’ intent to define the
thermoreactor as any region where the exothermic reaction of secondary air
and exhaust gas takes place. Although the claims are interpreted in light of
the Specification, limitations from the Specification are not read into the
claims.
Furthermore, the catalytic converter of Baeuerle need not be read as
the claimed thermoreactor to meet the limitations of claim 1. As noted
above, Baeuerle does not specifically confine the reaction region of the
secondary air with the uncombusted fuel in the exhaust gas to a particular
location. The mixture is ignited by glow plug 7 (Fact 1) and causes a
temperature rise in the catalytic converter 9 (Baeuerle, col. 4, ll. 31-37).
Therefore, at least at a location between glow plug 7 and temperature sensor
11 an exothermic reaction takes place to generate heat to heat the catalytic
converter 9. Even if the region 8, proximate glow plug 7, were construed as
the claimed thermoreactor, measuring a temperature downstream thereof
would still meet the limitation of “ascertaining and evaluating a measure of
the secondary air from a thermal behavior in the thermoreactor.” This
limitation does not require the temperature sensor itself to be placed in the
thermoreactor as Appellants suggest. Reply Br. p. 4. The only thing this
limitation requires as being in the thermoreactor is the “thermal behavior.”
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Neither the ascertaining, the evaluating nor the measure is required by the
claim limitation to be “in” the thermoreactor. The Specification does provide
that, “the thermal behavior in thermoreactor 21 may be derived from a
measure of the temperature in the thermoreactor 21” (Emphasis supplied).
But, the Specification additionally states that, “[a] particularly suitable
mounting location of the temperature sensor 30 is downstream from the
thermoreactor 21” (Emphasis supplied). Spec. p. 8, ll. 1-8. Neither the
Specification nor the claim requires the temperature sensor itself to be
located in the thermoreactor, nor do they limit how far downstream from the
thermoreactor the measure may be taken. The temperature sensor need only
be located in such a position that it can ascertain a measure of the thermal
behavior in the thermal reactor. Being in the downstream position, as
disclosed in Baeuerle, the value returned by temperature sensor 11 is a
function of the heating properties of the secondary air in the thermal reactor
(See Baeuerle col. 1, ll. 24-27 and col. 4, ll. 32-37), and is therefore “a
measure of the secondary air from a thermal behavior in the thermal reactor”
within the broadest reasonable interpretation of that term.
Since Baeuerle discloses each and every element of claim 1 (Fact 1),
Appellants have not established that the Examiner erred by rejecting claim 1
under 35 U.S.C. § 102(b) as anticipated by Baeuerle. Since claims 3 and 7
are grouped with claim 1, the rejection of claims 3 and 7 is also sustained.
It is noted that while the claims 4, 5 and 8 are argued under a separate
heading in the Brief and Reply Brief, Appellants’ arguments are based only
upon the dependence of these claims from claim 1. The rejections of claims
4, 5 and 8 are therefore also sustained.
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Appellants’ argument regarding claim 9 in the Brief is based only
upon the dependence of claim 9 from claim 1. Br. p. 13. However,
Appellants make additional arguments regarding claim 9 in the Reply Brief.
Namely, Appellants assert that the Examiner improperly employed an
“obvious to try” rationale (Reply Br. p. 8) and did not make the necessary
findings of fact to support the conclusion of obviousness (Reply Br. p. 10).
The Appellants have made these arguments without any specific application
to the claim or to the rejection. Firstly, it is not apparent where the Examiner
has employed the alleged, “obvious to try” standard. See Ans. p. 6-7.
Secondly, the Examiner acknowledged the factual inquiries necessary to
support the conclusion of obviousness (Ans. p. 5) and provided the
necessary factual support to reach a conclusion of obviousness (Ans. p. 6-7).
The absence of a specific finding regarding the level of skill in the art does
not give rise to reversible error where the prior art itself reflects an
appropriate level. See Okajima v. Bourdeau 261 F.3d at 1355. Where
Appellant has simply stated a principle of law without any application to the
claims, these remarks will not be considered as a separate argument for
patentability. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Accordingly, the rejection
of claim 9 is sustained.

CONCLUSION OF LAW
On the record before us, Appellants have not established that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b) as anticipated
by Baeuerle, and therefore, has not established that the examiner erred in
rejecting claims 2-5 and 7-9.

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DECISION
For the above reasons, the Examiner's rejection of claims 1-5 and 7-9
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)(1)(iv) (2007).

AFFIRMED

Vsh

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