Ex Parte Pfalzgraf

Board of Patent Appeals and Interferences

Aug 22, 2003

09647815 (B.P.A.I. Aug. 22, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BERNARD PFALZGRAF
____________
Appeal No. 2002-2329
Application No. 09/647,815
____________
ON BRIEF
____________
Before ABRAMS, NASE, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-12
and 14, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2002-2329
Application No. 09/647,815
Page 2
BACKGROUND
The appellant's invention relates to a method of operating an internal combustion
engine. An understanding of the invention can be derived from a reading of exemplary
claim 1, which has ben reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Nakase et al. (Nakase) 4,199,938 Apr. 29, 1980
Takeshima et al. (Takeshima) 5,473,890 Dec. 12, 1995
Sultan 5,706,652 Jan. 13, 1998
Cullen et al. (Cullen) 5,722,236 Mar. 3, 1998
Deeba et al. (Deeba) 6,105,365 Aug. 22, 2000
The following rejections stand under 35 U.S.C. § 103(a):
(1) Claims 1, 2, 10 and 14 on the basis of Cullen in view of Takeshima.
(2) Claims 3, 4 and 6 on the basis of Cullen in view of Takeshima and Sultan.
(3) Claim 5 on the basis of Cullen in view of Takeshima, Sultan and “design choice.”
(4) Claims 7 and 8 on the basis of Cullen in view of Takeshima, Sultan and “design
choice.”
(5) Claim 9 on the basis of Cullen in view of Takeshima, Sultan and Deeba.
(6) Claims 11 and 12 on the basis of Cullen in view of Takeshima and Nakase.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 16) for the examiner's complete reasoning in support of the rejections, and
Appeal No. 2002-2329
Application No. 09/647,815
Page 3
to the Brief (Paper No. 15) and Reply Brief (Paper No. 17) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant explains in the specification that a disadvantage of modern
catalytic converters is that their NOx storage capacity decreases over time as a result of
sulfur deposits. The appellant’s invention is directed to a process for operating an
internal combustion engine in such a manner as to remove SOx from a conventional
NOx storage catalytic converter. The invention is expressed in claim 1 in the following
manner:
1. A method of operating an internal combustion engine having a NOx
storage catalytic converter, including:
e) setting the requirement of desulfurization of the Nox
storage catalytic converter;
f) operating the internal combustion engine at
1<1 and
injecting secondary air upstream from the NOx storage
catalytic converter during a first time period;
g) operating the internal combustion engine at
2<1, where

2 is larger than
1, and discontinuing the injection of
secondary air during a second time period following the first
time period; and
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Application No. 09/647,815
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1These subparagraphs should be designated as a), b), c) and d). The same error appears in
claim 14.
2The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
h)1 resuming normal operation of the internal combustion engine.
As explained on pages 9 and 10 of the specification and page 9 of the Brief, when the
need for desulfurization is determined, the engine is operated rich (
1<1) and secondary
air is added upstream of the catalytic converter, which causes the mixture to become
lean (
>1) and has the effect of substantially raising the exhaust gas temperature.
When the exhaust gas temperature reaches a maximum allowable level, the secondary
air is discontinued, whereupon the fuel/air mixture is set to
2<1, with
2 then being
greater than
1.
The examiner has rejected this claim under 35 U.S.C. § 103 as being obvious2 in
view of the combined teachings of Cullen and Takeshima. In arriving at this conclusion,
the examiner has found that all of the subject matter recited in the claim is disclosed by
Cullen except that Cullen fails to disclose
2 larger than
1 during the corresponding
step of the method (see column 1, lines 37-44). However, it is the examiner’s position
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Application No. 09/647,815
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that it would have been obvious to one of ordinary skill in the art to modify Cullen to
meet the terms of claim 1 in view of the teachings of Takeshima. In this regard, the
appellant first points out that the Takeshima is different than that of Cullen in that
Takeshima utilizes an SOx absorbent upstream of an NOx absorbent to keep the latter
from accumulating SOx therein. The appellant goes on to argue that Takeshima
discloses purging the SOx from the SOx absorbent and the NOx from the NOx
absorbent at normal operating temperatures (see column 1, line 60 - column 2, line 14)
without injecting air into the exhaust stream, and there is no teaching in either reference
that the use of the two operating parameters (
1 and
2) disclosed in Takeshima for
SOx removal at normal operating temperatures will also work for high temperature
purging of SOx from a NOx storage catalytic converter.
For the reasons expressed in the Brief and the Reply Brief, we agree with the
appellant that the examiner’s rejection should not be sustained. Takeshima provides
two separate absorbing traps, one for removing NOx and a second, upstream of the
first, for removing SOx. Even if one acknowledges that Takeshima operates the engine
during a particular time period so as to produce an
2<1 but greater than
1 to purge the
SOx from the SOx trap at normal operating temperatures, there is no evidence to
support the examiner’s position that it would have been obvious to add such a feature
to the Cullen system, which has only the single NOx converter and which teaches
purging the SOx from a NOx converter at an elevated temperature. We are not
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Application No. 09/647,815
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persuaded otherwise by the examiner’s opinion on page 13 and 14 of the Answer,
which is unsupported by evidence, that the SOx and NOx absorbents should be
considered to be functional equivalents, and thereby it would have been obvious to one
of ordinary skill in the art to install a feature that works to remove SOx from the
Takeshima SOx absorber in the Cullen system to remove SOx from a NOx absorber.
It is our opinion that Cullen and Takeshima fail to establish a prima facie case of
obviousness with regard to the subject matter recited in claim 1, and we will not sustain
the rejection of claim 1 or of claims 2 and 10, which depend therefrom.
We reach the same conclusion, for the same reasons, with respect to
independent apparatus claim 14, which provides control means that operate the engine
with the same relationship between
1 and
2 during the second time interval.
Claims 3, 4 and 6, which depend from claim 1, stand rejected on the basis of
Cullen and Takeshima, taken further with Sultan, applied for its teachings regarding
temperature sensors. However, Sultan fails to alleviate the deficiency present in
combining the teachings of the other two references, and we will not sustain this
rejection.
Claim 5 depends from claim 1 through claims 3 or 4, and specifies 600°C as the
minimum desulfurization temperature and 100°C as the minimum value added thereto.
This claim has been rejected on the basis of the two references combined against claim
1, further considering that the selection of these temperatures would have been matters
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Application No. 09/647,815
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of obvious “design choice” by one of ordinary skill in the art. Be that as it may, the
addition of “design choice” with regard to the selection of temperature values does not
overcome the problem discussed above in the context of the rejection of claim 1
regarding the teachings that can be attributed to Cullen and Takeshima. The rejection
of claim 5 is not sustained.
For the same reason, we will not sustain the rejection of claims 7 and 8, both of
which depend from claim 1, as being unpatentable over Cullen, Takeshima, and the
obvious “design choice” of selecting the specific values for
1 and
2 that are set forth in
these claims.
The addition of Deeba to Cullen, Takeshima and Sultan in rejecting dependent
claim 9 does not alter our conclusion that Cullen and Takeshima do not render claim 1
obvious, and we will not sustain this rejection.
Nor will we sustain the rejection of dependent claims 11 and 12 on the basis of
the references applied against claim 1 taken further with Nakase, which does not
alleviate the problem with the two main references.
CONCLUSION
None of the rejections are sustained.
The decision of the examiner is reversed.
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Application No. 09/647,815
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
PETER N. LALOS
STEVENS, DAVIS, MILLER & MOSHER, LLP
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