Ex Parte McNamara et al

Patent Trial and Appeal Board

Oct 30, 2016

13155224 (P.T.A.B. Oct. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/155,224
94591 7590
Johnson Matthey Inc,
435 Devon Park Dr.
Suite 600
06/07/2011
Wayne, PA 19087-1998
11/07/2016
FIRST NAMED INVENTOR
John Martin McNamara
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ROY/1549USw2/ADN 2572
EXAMINER
LARGI, MATTHEW THOMAS
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
11/07/2016 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):
J ohnsonMatthey IP@matthey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MARTIN MCNAMARA, JULIA MARGARET ROWE,
STEPHEN POULSTON, RAJ RAO RAJARAM, ROBERT IAN CRANE,
CONSTANTINE ARCOUMANIS, and LAURETTA RUBINO
Appeal2014-005196
Application 13/155,2241
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Johnson Matthey
Public Limited Company. Appeal Br. 1.
Appeal2014-005196
Application 13/155,224
BACKGROl.J1'-JD
According to Appellants, "[t]he present invention relates to an exhaust
system for treating exhaust gases from a gasoline engine, and in particular it
relates to an exhaust system for trapping and combusting fine particulate
matter in the exhaust gas." Spec. 1, 11. 15-17.
CLAIMS
Claims 1-20 are on appeal. Claim 1 is illustrative of the appealed
claims and recites:
1. A system comprising a three-way catalyst (TWC) adapted
for simultaneously oxidizing CO and HC and reducing NOx of
an exhaust gas from a gasoline engine, means for trapping
particulate matter (PM) of < 100 nm from the exhaust gas and a
catalyst for catalysing the oxidation of the PM by at least one of
carbon dioxide (C02) and water (H20) in the exhaust gas, which
catalyst consists essentially of a supported alkali metal, wherein
the supported alkali metal is disposed downstream of the TWC
and is disposed relative to the means for trapping in order to
effect contact between the supported alkali metal and the
particulate matter.
App. Br. 11.
REJECTIONS
1. The Examiner rejects claims 1-20 under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the written
description requirement.
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Application 13/155,224
2. The Examiner rejects claims 1-3, 5-7, 10-16, 18, and 20 under
35 U.S.C. § 103(a) as unpatentable over Maus2 in view of Stobbe3
and Domesle. 4
3. The Examiner rejects claims 4, 8, 9, 17, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Maus in view of Stobbe, Domesle,
and Inoue.5
DISCUSSION
Written Description
The Examiner rejects claims 1-20 as failing to comply with the
written description requirement because the claim limitation "which catalyst
consists essentially of a supported alkali metal" in both independent claims 1
and 14 is not supported in the original disclosure. Final Act. 2.
Appellants raise two arguments with respect to this rejection: 1) that
the original claim uses the transitional term "comprising," which is broader
than, and thus includes, the more limited term "consisting essentially of;"
and 2) that all of the examples in the Specification "utilize the simple
catalysts of Kl Ab03, K/Ce02, or K/Zr02 and the current application does
not teach the use of other elements added to the supported alkali metal that
materially affect the basic characteristic( s) [of the] supported alkali metal."
Appeal Br. 3.
For the reasons set forth below, we are not persuaded of error by
Appellants' arguments.
2 Maus et al., US 2002/0011069 Al, pub. Jan. 31, 2002.
3 Stobbe et al., US 7,179,430 Bl, iss. Feb. 20, 2007.
4 Domesle et al., US 4,515,758, iss. May 7, 1985.
5 Inoue et al., US 6,110,860, iss. Aug. 29, 2000.
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Application 13/155,224
Regarding Appellants' first argument, we agree with the Examiner
that the term "comprising" does not support the more limited transitional
phrase "consisting essentially of." Ans. 2. "Adequate written description
means that the applicant, in the specification, must 'convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the [claimed] invention.'" Agilent Techs., Inc. v.
Ajjj;metrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009), reh 'gen bane denied
Sept. 18, 2009. Although the original claims include the open ended
transitional phrase "comprising," that fact alone does not show that
Appellants were in possession of an invention including a catalyst consisting
essentially of a supported alkali metal. The transitional phrase "consisting
essentially of' limits the scope of a claim to the specified materials or steps
"and those that do not materially affect the basic and novel characteristic(s)"
of the claimed invention. In re Herz, 537 F.2d 549, 551-52, (CCPA 1976).
Thus, to support the phrase "consisting essentially of' the written description
must show that Appellants were in possession of an invention including a
catalyst of a supported alkali metal with no other materials that materially
affect the action of the catalyst on the oxidation reaction of the particulate
matter as claimed. The open-ended transitional phrase "comprising" by
itself does not show that Appellants were in possession of such a catalyst at
the time the Specification was filed.
Regarding Appellants' second argument, we are not persuaded that
the examples recited in the Specification provide adequate written
description support for the claim limitation at issue. The Specification
describes the preparation of the example catalysts:
A 1 Owt%.K/ Ah03, 1 Owt%.K/Ce02 and 1 Owt%.K/Zr02
(as the elemental alkali metal based on the total weight of the
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Application 13/155,224
catalyst) was preparea Dy wet m1pregnation. In each case the
impregnation medium was an aqueous solution of KNQ3. A
mixture of the correct amounts of the support and impregnation
solution was heated to evaporate the water and the material was
calcined at 500°C for 2 hours. Three alumina supports were
used: alpha-, theta- and gamma-. We understand that the alkali
metal is present as K20 in each catalyst, although some residual
KNQ3 may be present post-calcination.
Spec. 11, 11. 14--20. However, the Specification does not indicate that other
materials that do not affect the oxidation reaction are not present, and the
Specification does not provide a reason to exclude other materials from the
catalyst. See Santarus, Inc. v Par Pharmaceutical, Inc., 694 F.3d. 1344,
1351 (Fed Cir. 2012) ("Negative claim limitations are adequately supported
when the specification describes a reason to exclude the relevant
limitation."). Thus, we agree with the Examiner that the examples provided
in the Specification do not show that Appellants were in possession of a
catalysts that consists essentially of a supported alkali metal when the
Specification was filed. See Ans. 3.
On this issue we also note that the claims were amended to change the
catalyst from "comprising a supported alkali metal" to "consisting
essentially of a supported alkali metal" in response to a rejection over art
allegedly showing a catalyst including other material elements beyond the
supported alkali metal. See Appellants' Amendment and Request for
Reconsideration (filed Sept., 14, 2012) (see Amendment to Claims at 2; and
Remarks at 5-8). Appellants remarks indicate only that the Amendment was
made to avoid certain art, and Appellants neither indicate how the
Specification supports the Amendment nor provide any reason why
excluding the use of other materials would have been desirable. Thus, we
find that the Amendment does not provide support for Appellants' position
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Application 13/155,224
that the Specification shows they were in possession of the claimed
invention, as amended, at the time the Specification was filed.
Based on the foregoing, we sustain the rejection of claims 1-20 as
failing to comply with the written description requirement.
Obviousness
With respect to independent claims 1 and 14, the Examiner finds that
Maus discloses a three-way catalyst, means for trapping particulate matter,
and a catalyst for catalyzing the oxidation of particulate matter. Final Act. 3.
More specifically, the Examiner finds that element 4 (Maus, Fig. 1) includes
both a means for trapping and a catalyst. Final Act. 3. (citing Maus i-f 9).
The Examiner finds that "Maus does not disclose that the means for trapping
( 42) traps particulate matter of less than 100 nm, that the particulate matter
is oxidized at temperatures in excess of 500 degrees C, and that the catalyst
consists essentially of a supported alkali metal." Final Act. 4. The
Examiner relies on Stobbe only to the extent that Stobbe discloses a soot
particle filter for trapping particles of less than 100 nm. Id. With respect to
the catalyst, the Examiner relies on Domesle and concludes:
Id.
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have applied the filter of
[Domesle] to the system and method of Maus, as both references
are directed towards exhaust emission treatment devices. One of
ordinary skill would have recognized that the filter of [Domesle]
would reduce fuel consumption due to regeneration. (See
[Domesle], Column 1, Lines 41-44).
Appellants argue that nothing in the art "would suggest the use of a
catalyst that consists essentially of a supported alkali metal in place of the
storage coating in Maus." Appeal Br. 6. More specifically, Appellants
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Application 13/155,224
argue that "[d]ue to the differences between ivfaus and Domesle, one of
ordinary skill in the art would have not been motivated to combine these two
references to make Appellants' claimed invention." Id. at 7.
We are persuaded that the Examiner erred in rejecting independent
claims 1 and 14 because the Examiner's conclusion regarding why it would
have been obvious to modify Maus' s system to use Domesle' s catalyst is not
supported by a preponderance of the evidence on the record before us. In
the rejection, the Examiner concludes that this combination would have been
obvious in order to "reduce fuel consumption due to regeneration." Final
Act. 4. However, we agree with Appellants that the Examiner has not
shown that fuel consumption would be reduced by the combination because
of the differences in exhaust temperature between a diesel engine, as used in
Domesle, and a gasoline engine, as used in Maus. See Appeal Br. 8-9.
Specifically, Domesle discloses that the exhaust gas temperature for a
diesel engine is lower than the typical range of ignition temperatures, 450°-
6000 C, of particulate matter in the exhaust. Domesle col. 1, 11. 24--30.
Domesle discloses that it is desirable to reduce the ignition temperature of
particulate matter with the disclosed catalyst rather than using additional fuel
to increase the temperature of the diesel exhaust gas, thereby reducing "fuel
consumption during the regeneration phase of a filter." Id. at col. 1, 11. 30-
51. However, Appellants provide that:
Typically, average exhaust gas temperatures for a
stoichiometrically operated gasoline engine are between 600-
8000C and for GDI between about 300-550°C, although at high
speed, GDI engines can revert to stoichiometric operation and
hotter exhaust gas temperatures are reached. Exhaust gas
temperatures from diesel engines, however, are much cooler than
gasoline engines. Typically, for passenger vehicles using light-
duty diesel engines, exhaust gas temperatures are in the range
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Application 13/155,224
from 200-350°C and, for a heavy-duty diesel plant, about 200-
5500C.
Spec. 3, 11. 1-7. Based on this disclosure, Appellants argue that "there is no
need to reduce ignition temperatures on the particulate filter [of Maus]."
Ans. 5; see also Appeal Br. 8. We agree that, on the record before us, there
is no indication that one of ordinary skill in the art would have found it
obvious to reduce the ignition temperature of the particulate matter in a
gasoline system, such as in the system taught by Maus, because the
Examiner has not pointed to any evidence showing that fuel consumption
would be reduced by lowering the ignition temperature of the particulate
matter in a gasoline engine.
In response to Appellants' arguments, the Examiner alternatively
concludes that "lowering ignition temperature of particulate matter in a
particulate filter ... will provide a wider range of temperatures of
combustion of particulate matter which would ensure a larger percentage of
particulate matter reduction." Ans. 6. Appellants argue that:
Use of a catalyst does not allow soot combustion at a wider
range of temperatures. A catalyst merely reduces the (single)
temperature at which soot combustion occurs. This is made clear
from Domesle e.g. at column 1, lines 45-51, Figure 2 (see column
3, line 64-column 4, line 24 ); and Example 14.
Reply Br. 6. Without citation to any evidentiary support, we find the
Examiner's conclusion in this regard to be speculative. We find that a
preponderance of the evidence, including the portions of Domesle cited by
Appellants, does not support the conclusion that a larger percentage of
particular matter would be reduced with a lower ignition temperature
because the Examiner has not shown that the ignition temperature for any
particulate matter would be above the exhaust gas temperature in a gasoline
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Application 13/155,224
engine, which would suggest that it would be desirable to lower the ignition
temperature as taught by Domesle.
For these reasons and because the Examiner does not rely on the
addition of Stobbe to cure the deficiency in the rejection noted above, we do
not sustain the rejection of independent claims 1 and 14 or dependent claims
2, 3, 5-7, 10-16, 18, and 20. The Examiner does not rely on Inoue to cure
the deficiency in the rejection of independent claims 1 and 14, and thus, we
also do not sustain the rejection of claims 4, 8, 9, 17, and 19.
CONCLUSION
For the reasons set forth above, we AFFIRM the rejection of claims
1-20 as failing to comply with the written description requirement; and we
REVERSE the rejections of claims 1-20 as obvious.
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
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