Ex Parte Nojima et alDownload PDFPatent Trial and Appeal BoardSep 20, 201312117267 (P.T.A.B. Sep. 20, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/117,267 05/08/2008 Shigeru NOJIMA 5576-159CT 8718 20792 7590 09/20/2013 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER NGUYEN, CAM N ART UNIT PAPER NUMBER 1736 MAIL DATE DELIVERY MODE 09/20/2013 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 SHIGERU NOJIMA, KOZO IIDA, YOSHIAKI OBAYASHI, MASASHI KIYOSAWA, and MASANORI DEMOTO ____________ Appeal 2012-009073 Application 12/117,267 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and LINDA M. GAUDETTE, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A catalyst configuration for removing nitrogen oxides in exhaust gas for a power generation facility by reduction in the presence of ammonia, comprising: a means for adding ammonia to the exhaust gas; a first catalyst; and a second catalyst, wherein the first catalyst is highly active in removing nitrogen dioxide, the second catalyst is highly active in removing nitrogen monoxide, the means for adding ammonia to the exhaust gas is arranged on the upstream side in the exhaust gas flow direction of the first and second catalyst, and Appeal 2012-009073 Application 12/117,267 2 the first catalyst is arranged on the upstream side in the exhaust gas flow direction of the second catalyst. The Examiner relies upon the following references in the rejection of the appealed claims: Balling et al. (Balling) 5,397,545 Mar. 14, 1995 Pfeifer et al. (Pfeifer) US 2002/0116920 A1 Aug. 29, 2002 Appellants' claimed invention is directed to a catalyst configuration for removing nitrogen oxides in exhaust gas. The configuration comprises first and second catalysts with the first catalyst arranged on the upstream side in the exhaust gas flow direction of the second catalyst. The configuration also comprises means for adding ammonia to the exhaust gas on the upstream side of the first and second catalysts. Appealed claims 1, 11, and 12 stand rejected under 35 U.S.C. § 102(a) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Pfeifer. Claims 2-10 and 13-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pfeifer in view of Balling.1 We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we find ourselves in agreement with Appellants that the Examiner's rejections are not well founded. Accordingly, we will not sustain the Examiner's rejections. Pfeifer discloses an exhaust gas treatment unit comprising a first and second catalyst, but the Examiner points to no disclosure in the reference which teaches the claimed means for adding ammonia to the exhaust gas. 1 The Examiner has withdrawn the rejection of claims 1-16 under 35 U.S.C. § 112, first paragraph (see Ans. 8, first para.). Appeal 2012-009073 Application 12/117,267 3 According to the Examiner, such a teaching by Pfeifer is not necessary since the claim language is no more than a recitation of intended use that has no bearing on the patentability of the claimed catalyst configuration because it does not change the structure and composition of the claimed catalyst configuration (see Ans. 6, third para.). The Examiner further explains that "[s]ince the instant claims are called for [sic] 'a catalyst configuration', which is 'a product' and not 'a process of use', recitation of the intended use of the claimed catalyst configuration does not appear to make the claimed catalyst configuration differ from the catalyst disclosed by the references as applied." (Ans. 9, first complete sentence). We, like Appellants, do not subscribe to the Examiner's interpretation of the claim language on appeal. Appellants are not claiming a product but a system or apparatus that includes a means for adding ammonia to the exhaust gas as a structural element. Since the Examiner has cited no disclosure in Pfeifer, or Balling for the matter, of any means for adding ammonia to the exhaust gas, the Examiner's rejection constitutes reversible error. The Examiner has mistakenly given no patentable weight to the claimed means for adding ammonia to the exhaust gas. In conclusion, based on the foregoing, we are constrained to reverse the Examiner's rejections. REVERSED cam Copy with citationCopy as parenthetical citation