Ex Parte Sisken

Board of Patent Appeals and Interferences

Apr 30, 2008

11087169 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN DEAN SISKEN
____________

Appeal 2008-1182
Application 11/087,169
Technology Center 3700
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Decided: April 30, 2008
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Before HUBERT C. LORIN, JENNIFER D. BAHR, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-2. Claims 3-4 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM.
Appeal 2008-1182
Application 11/087,169
THE INVENTION
The Appellant’s claimed invention is directed to an internal
combustion engine having a reductant near a control valve injected into a
NOx adsorber. A pressure drop across the control valve results in turbulence
that improves mixing of the reductant with the exhaust gas (Specification
2:11-20). Claim 1 reproduced below is representative of the subject matter
of appeal.

1. An internal combustion engine with a
plurality of cylinders, the engine including an
intake manifold and an exhaust manifold, the
engine further comprising:
a first exhaust path for receiving a routing
exhaust gases;
a first NOx adsorber located in the first
exhaust path;
a second exhaust path for receiving and
routing exhaust gases;
a first flow control valve between the
exhaust manifold and the first exhaust path and a
second flow control valve between the exhaust
manifold and the second exhaust path, the first and
second flow control valves controlling the relative
amounts of exhausts gas flowing through the first
and second exhaust paths; and
a first injector for injecting a reductant into
the exhaust gas stream, the first injector being
located so as to inject the reductant directly in the
first flow control valve;
wherein there is a pressure drop across the
first flow control valve that results in turbulent
flow in a region immediately adjacent to the first
flow control valve that includes the reductant
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Application 11/087,169
injection location, thereby causing mixing of the
reductant and the exhaust gas in a relatively short
distance and to allow regeneration of the first NOx
adsorber.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Hirota US 5,406,790 Apr. 18, 1995
van Nieustadt US 6,679,051 B1 Jan. 20, 2004

The following rejections are before us for review:
1. Claims 1-2 are rejected under 35 U.S.C. § 103(a) as
unpatentable over van Nieustadt and Hirota.

THE ISSUE
The issue is whether the Appellant has shown that the Examiner erred
in rejecting the claims 1 and 2 under 35 U.S.C. § 103(a) as being
unpatentable over van Nieustadt and Hirota.
This issue turns on whether the van Nieustadt reference sufficiently
teaches away from using two exhaust valves in an exhaust adsorber system.

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Appeal 2008-1182
Application 11/087,169
FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence1:
1. Van Nieustadt discloses an engine emission control device which uses
a single valve 180, first 214 and second 212 exhaust paths, NOx catalysts
70A, 70B, and a reductant injector 170.
2. Van Nieustadt discloses that there are disadvantages with using two
exhaust valves including increasing costs, manufacturing complexity, and
wiring complexity (Col. 1:35-41).
3. Hirota discloses an exhaust gas purification device with two exhaust
valves 6a, 6b, each leading to a NOx adsorber 1a, 1b after an injector 4a, 4b
inserts a reducing agent (4).
4. Hirota discloses that the two valves 6a, 6b can be used to generate air
flow during the regenerating process. (Col. 10:21-33).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/087,169
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739.

ANALYSIS
The Appellant argues that the rejection of record is improper because
van Nieustadt “specifically teaches away from the use of two exhaust valves
because of the increased cost and complexity associated with the second
exhaust valve” (Br. 4) and that a prima facie case on obviousness has not
been established (Br. 5).
We disagree. “Although a reference that teaches away is a significant
factor to be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance. A known or
obvious composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.” In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In this case, Hirota has
disclosed the advantage of using two valves to generate air flow during the
regenerating process (FF 4). When viewed in substance, the modification of
the device of van Nieustadt to include an additional valve as disclosed by
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Application 11/087,169
Hirota to better generate air flow during the regenerating process is a
combination of familiar elements yielding a predictable result and is
considered obvious.
Note also that it has been held that “[t]he fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another.” Winner Int’l. Royalty v. Wang, 202 F.3d 1340, 1349,
n. 8 (Fed. Cir. 2000). Here, that the benefit gained by using two valves to
generate air flow during the regenerating process as disclosed by Hirota may
come at the expense of the cost and complexity savings of using a single
valve as taught by van Nieustadt should not nullify its use as the basis to
modify the van Nieustadt engine emission control device . One of ordinary
skill in the art could see benefit in generating air flow during the
regenerating process which could outweigh the cost and complexity
considerations of adding a second valve.
For these reasons we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over van Nieustadt and Hirota.
The Appellant has not argued separately for the patentability of claim
2 and accordingly we affirm the rejection of this claim for the same reasons
as given above.

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Appeal 2008-1182
Application 11/087,169
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1 and 2 under 35 U.S.C. § 103(b) as unpatentable over
van Nieustadt in view of Hirota.

DECISON
The Examiner’s rejection of claims 1-2 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

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