Ex Parte Kotnish

Patent Trial and Appeal Board

Oct 24, 2017

13819083 (P.T.A.B. Oct. 24, 2017)

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.
13/819,083 02/26/2013 Ashish Kotnish 69658-US-PCT 1004
109 7590 10/26/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
SINGH, DAPINDER
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHISH KOTNISH
Appeal 2017-000827
Application 13/819,083
Technology Center 3700
Before GEORGE R. HOSKINS, MICHAEL L. WOODS,
and ANTHONY KNIGHT, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ashish Kotnish (“Appellant”) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1—11 and 26. Br. 5. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
Appeal 2017-000827
Application 13/819,083
CLAIMED SUBJECT MATTER
Appellant’s invention relates to a “system that includes a particulate
filter to control emissions, and more specifically a process for optimizing a
regeneration cycle of a particulate filter.” Spec. 12. Claim 1 is the sole
independent claim and is reproduced below, with emphasis added to a
particular limitation at issue in this appeal.
1. A diesel particulate filter system comprising:
a) a diesel particulate filter having a substantially linear
soot load to pressure drop characteristic across the diesel
particulate filter,
b) a pressure sensor on the inlet side of the diesel
particulate filter;
c) a control module in communication with the pressure
sensor, wherein the control module is loaded with one or more
look-up tables; and
d) at least one of the look-up tables is a pressure drop look­
up table that takes into account the variation in soot load of the
diesel particulate filter and correlates the amount of soot loaded
in the diesel particulate filter to a change in pressure measured
by the pressure sensor;
wherein the control module initiates a regeneration cycle
when soot loading of the diesel particulate filter achieves a
predetermined soot load.
Br. 15 (emphasis added) (App. A, CLAIMS).
THE REJECTIONS
I. Claim 3 stands rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Final Act. 4 (rejecting claims 1—11 and 26 as indefinite);
see also Ans. 3, 5 (withdrawing rejection as to independent claim 1, but
otherwise maintaining rejection of claim 3).
2
Appeal 2017-000827
Application 13/819,083
II. Claims 1—3, 5, 7—11, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nishizawa (US Pub. No. 2007/0220868
Al, published Sept. 27, 2007), Ziebarth (US Pub. No. 2008/0148700 Al,
published June 26, 2008), and Official Notice. Final Act. 5.
III. Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishizawa and Otake (US Pub. No. 2005/0126162 Al,
published June 16, 2005). Final Act. 9.
ANALYSIS
Rejection I: Claim 3 as Indefinite
Claim 3 depends from claim 1 and further recites, “wherein the diesel
particulate filter has variability of ±1.0 g/L at the predetermined soot load
regardless of whether the diesel particulate filter is filled with soot after the
soot is only partially or fully removed.” Br. 15 (App. A, CLAIMS)
(emphasis added). In rejecting claim 3 as indefinite, the Examiner finds that
the term “variability” is indefinite and lacks antecedent basis. Final Act. 4.
Appellant does not contest the rejection of claim 3 as being indefinite.
See generally Br.; id. at 10 (contesting only the rejection of independent
claim 1 as indefinite).
Accordingly, we affirm the rejection of claim 3 as indefinite.
Rejection II: Claims 1—3, 5, 7—11, and 26 Unpatentable Over
Nishizawa, Ziebarth, and Official Notice
The primary issue before us is the interpretation of the claimed “diesel
particulate filter having a substantially linear soot load to pressure drop
characteristic across the diesel particulate filter” (Br. 15 (App. A, CLAIMS))
3
Appeal 2017-000827
Application 13/819,083
and whether Ziebarth discloses a filter having the claimed characteristic, as
determined by the Examiner (Final Act. 6; Ans. 3—6).
Examiner’s Rejection
The Examiner interprets the claimed “filter having a substantially
linear soot load to pressure drop characteristic” as a functional limitation
(Ans. 3 (citing MPEP § 2173.05(g))) and finds that Ziebarth’s filter has the
same structure as that recited in the claim, and that the functional claim
limitation is therefore met (see id. at 3—5 (citing Ziebarth | 8; Spec. 133)).
In support of the Examiner’s claim interpretation, the Examiner cites
to a particular description within Appellant’s Specification, which we
reproduce, below:
The discriminating layer may be any layer on the filter that
allows the soot to collect evenly on and/or within the particulate
filter so that the soot loading and the pressure drop have a
substantially linear relationship. . . . More preferably, the diesel
particulate filter may be made of Acicular Mullite.
Ans. 4 (citing Spec. 133) (emphases added).
In citing the Specification, the Examiner interprets the claimed
limitation—substantially linear soot load to pressure drop characteristic—as
being satisfied if the filter collects soot evenly and is made of Acicular
Mullite. See id. (“it is clear that. . . the filter that is made of Acicular
Mullite that gives the filter the intended functionality.”).
Based on this interpretation, the Examiner finds that Ziebarth
discloses a filter having a “substantially linear soot load to pressure drop
characteristic.” Id. The Examiner cites Ziebarth’s disclosure that its filter
“may allow more even distribution or redistribution of the soot to specific
4
Appeal 2017-000827
Application 13/819,083
areas of the filter” (id. (citing Ziebarth | 8)) and its disclosure that the filter
may be made of Acicular Mullite (id. at 5 (citing Ziebarth || 37-40)).
In essence, the Examiner’s position is that because Ziebarth’s filter
discloses the same structure as the described invention—that is, an Acicular
Mullite filter that allows for even soot distribution—Ziebarth’s filter
inherently has a “substantially linear soot load to pressure drop
characteristic.”
Appellant’s Argument
In contesting the rejection, Appellant argues that nothing in the
Examiner’s cited portion of Ziebarth discloses the claimed soot loading
linearity. Br. 11. We agree.
Our Analysis
The claim requires that the filter have a characteristic, that
characteristic being a substantially linear soot load to pressure drop. Br. 15
(App. A, CLAIMS). Appellant’s Specification describes at least two
embodiments, each with different filter characteristics: (1) one where the
amount of pressure drop and the amount of soot contained in the diesel
particulate filter have a curved, or exponential, correlation; and (2) one
where the amount of pressure drop and the amount of soot contained in the
diesel particulate filter have a substantially linear correlation. Spec. 1 54.
In reciting that the claimed filter has “a substantially linear soot load to
pressure drop characteristic,” Appellant limits its claim to filters falling
under embodiment (2), and to the exclusion of embodiment (1), and the
5
Appeal 2017-000827
Application 13/819,083
Examiner’s findings do not persuade us that Ziebarth’s filter falls under
embodiment (2), rather than embodiment (1).
Moreover, even if we assume that the limitation is functional, we
disagree with the Examiner’s finding that Ziebarth’s filter performs the
claimed function. The Examiner’s finding appears to be based on inherency,
which is not adequately supported by the record.
To establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill___ Inherency, however,
may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of
circumstances is not sufficient. . . .
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added)
(citations and internal quotations omitted).
In the present case, we are not persuaded that Ziebarth’s disclosure of
an Acicular Mullite filter with “more even distribution or redistribution of
the soot to specific areas” (Ziebarth | 8) necessarily results in soot loading
causing the filter to have a “substantially linear soot load to pressure drop
characteristic.” See Ans. 3—5. The Specification describes that the
“correlation between the pressure drop and the amount of soot in the diesel
particulate filter may [also] be affected by the length, diameter, cross
sectional area, or a combination thereof of the diesel particulate filter.”
Spec. 1 54. Accordingly, whether a “diesel particulate filter [has] a
substantially linear soot load to pressure drop characteristic” requires not
only an understanding of the filter’s composition, but also an understanding
of the filter’s shape (e.g., length, diameter, cross sectional area, or whether
the filter is conical), and without knowing the shape of Ziebarth’s filter, we
6
Appeal 2017-000827
Application 13/819,083
cannot determine whether Ziebarth’s filter would necessarily “hav[e] a
substantially linear soot load to pressure drop characteristic.”
Accordingly, we do not sustain the rejection of claim 1, and its
dependent claims 2, 3, 5, 7—11, and 26, as unpatentable over Nishizawa,
Ziebarth, and Official Notice.
Rejection III: Nishizawa and Otake
In rejecting dependent claims 4 and 6, as unpatentable over Nishizawa
and Otake, the Examiner finds “Nishizawa discloses all the limitations set
forth in claim 1”. Final Act. 9. This is inconsistent with the rejection of
claim 1, which states “Nishizawa does not disclose . . . that the diesel
particulate filter [has] a substantially linear soot load to pressure drop
characteristic across the diesel particulate filter.” Id. at 6. The Examiner has
not cited to a preponderance of evidence sufficient to support a finding that
Nishizawa discloses the “substantially linear” filter loading characteristic
recited in claim 1. Thus, we do not sustain the rejection of claims 4 and 6 as
unpatentable over Nishizawa and Otake.
SUMMARY
The Examiner’s decision to reject claim 3 under 35U.S.C. § 112,
second paragraph, as indefinite is affirmed.
The Examiner’s decision to reject claims 1—3, 5, 7—11, and 26 under
35 U.S.C. § 103(a) as unpatentable over Nishizawa, Ziebarth, and Official
Notice is reversed.
7
Appeal 2017-000827
Application 13/819,083
The Examiner’s decision to reject claims 4 and 6 under 35 U.S.C.
§ 103(a) as unpatentable over Nishizawa and Otake 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)(l)(iv).
AFFIRMED-IN-PART
8