Ex Parte Taxon

Board of Patent Appeals and Interferences

Sep 2, 2009

11121777 (B.P.A.I. Sep. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MORSE N. TAXON
____________

Appeal 2009-004314
Application 11/121,777
Technology Center 3700
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Decided: September 2, 2009
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Morse N. Taxon (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-19. Claim 20 has been canceled.
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention is drawn toward a process and an apparatus for
selective catalytic reduction of nitrogen oxides coming from internal
combustion engines. Spec. 1, ¶¶ [0001], [0002].
Claim 1 is representative of the claimed invention and reads as
follows:
1. A process for selective catalytic reduction of NOx
generated by an automotive vehicle engine, comprising:
providing hydrogen from an on-board hydrogen source
consisting of a hydrogen storage unit of an automotive
vehicle in which the hydrogen is being stored for use as a
source of chemical potential energy for charging an
auxiliary power unit, the storage unit containing said
hydrogen stored in the form of atomic hydrogen, hydride,
or sorbed hydrogen species;
combining said hydrogen with exhaust gas released from
the engine to form a hydrogen-exhaust gas combination;
and
contacting said gas combination with a selective catalytic
reduction NOx catalyst under conditions in which the
catalyst can catalyze the selective catalytic reduction of
NOx to N2, H20, and optionally 02.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Oshima US 5,272,871 Dec. 28, 1993
Murphy US 6,122,909 Sep. 26, 2000
Choi US 6,354,079 B1 Mar. 12, 2002
Pfeifer US 6,725,647 B2 Apr. 27, 2004
Yamamoto US 6,823,662 B1 Nov. 30, 2004
Breuer US 6,871,491 B2 Mar. 29, 2005

The following rejections are before us for review:
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Yamamoto, Breuer, and Murphy.
The Examiner rejected claims 2-10, 12-16, 18, and 19 under 35
U.S.C. § 103(a) as unpatentable over Oshima, Breuer, and Murphy.
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Oshima, Breuer, Murphy, and Pfeifer.
The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Oshima, Breuer, Murphy, and Choi.

THE ISSUE
The Examiner found that Yamamoto discloses all features of
independent claim 1, except that the hydrogen is stored in the form of
hydride in an on-board hydrogen supply unit and is used as a source of
chemical potential energy for charging an auxiliary power unit. Ans. 4.
Similarly, the Examiner found that Oshima discloses all features of
independent claims 2 and 18, except that the hydrogen is stored in the form
of hydride in an on-board hydrogen supply unit and is used as a source of
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chemical potential energy for charging an auxiliary power unit. Ans. 5. The
Examiner further found that Breuer discloses using hydrogen as a source of
chemical potential energy for charging an auxiliary power unit, and that
Murphy discloses storing hydrogen in the form of hydride. Ans. 4, 5.
Accordingly, the Examiner concluded that it would have been obvious to a
person of ordinary skill in the art to provide the teachings of Breuer and
Murphy in the systems of Yamamoto and Oshima, respectively, because it
would provide for a “readily available reductant for use when needed.” Id.
Appellant argues that the combined teachings of Yamamoto, Breuer,
and Murphy, and Oshima, Breuer, and Murphy, do not disclose an on-board
hydrogen source that consists of a hydrogen storage unit in which the
hydrogen is stored in the form of atomic hydrogen, hydride, or sorbed
hydrogen species. App. Br. 14 (claim 1) and 17 (claims 2 and 18). Rather,
according to Appellant, the combined teachings of Yamamoto, Breuer, and
Murphy, and Oshima, Breuer, and Murphy, disclose a method and a system
in which the “on-board generation of hydrogen [is] from a different source,
e.g.: water, ammonia, fuel or exhaust gas.” Emphasis added. Id. It appears
that Appellant is trying to distinguish between an on-board hydrogen source
and an on-board hydrogen generation source. See Reply Br. 4. In other
words, it appears Appellant is trying to distinguish between the on-board
hydrogen source and the source of the on-board hydrogen source.
In light of the above, the issue involved in this appeal is whether
Appellant has demonstrated that the Examiner erred in finding that the
combined teachings of Yamamoto, Breuer, and Murphy, and Oshima,
Breuer, and Murphy, disclose an on-board hydrogen source that consists of a
hydrogen storage unit in which the hydrogen is stored in the form of a
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hydride. The issue turns on the distinction between the on-board hydrogen
source, as called for in claims 1, 2, and 18, and the source of the on-board
hydrogen source, as argued by Appellant.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Appellant presents essentially identical arguments for claim 1 and
claims 2 and 18. See App. Br. 12-17. As such, the following analysis
applies equally to the two sets of claims, i.e., claim 1 rejected over
Yamamoto, Breuer, and Murphy, and claims 2 and 18, rejected over
Oshima, Breuer, and Murphy.
It is our finding that Yamamoto discloses an exhaust gas purifying
system including a hydrogen storing device 21 for storing hydrogen-
contained gas produced by a reforming catalyst 20 from hydrocarbon fuel F
and air A. Yamamoto, col. 30, ll. 42-52 and fig. 17. Hence, the hydrogen
storing device 21 of Yamamoto constitutes the on-board hydrogen source,
and the hydrocarbon fuel F and air A constitute the source of the on-board
hydrogen source. Equally, Oshima discloses an exhaust gas purifying
system including a hydrogen generator 1 that supplies hydrogen gas by the
electrolysis of water or water vapor to the exhaust stream of engine E.
Oshima, Abstract and fig. 1. As such, the hydrogen generator 1 of Oshima
constitutes the on-board hydrogen source, and water or water vapor
constitutes the source of the on-board hydrogen source. Lastly, Murphy
discloses a system for treating an exhaust stream of an internal combustion
engine including an on-board metal hydride hydrogen storage unit 52 for
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storing hydrogen produced by the electrolysis of water. Murphy, Abstract;
col. 10, ll. 13-15; col. 12, ll. 49-51; and fig. 1. As such, the metal hydride
hydrogen storage unit 52 of Murphy constitutes the on-board hydrogen
source, and water constitutes the source of the on-board hydrogen source.
We find that Appellant’s arguments are not commensurate with the
scope of claims 1, 2, and 18, which merely require an “on-board hydrogen
source consisting of a hydrogen storage unit.” None of the claims requires a
source of the on-board hydrogen source, namely, a hydrogen generation
source. As stated by our reviewing court in In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Hence, as
long as the combined teachings of the references discloses a “hydrogen
source consisting of a hydrogen storage unit,” in which the “hydrogen [is]
stored in the form of atomic hydrogen, hydride, or sorbed hydrogen
species,” the limitation has been satisfied. We agree with the Examiner that
Murphy specifically discloses an on-board metal hydride hydrogen storage
unit 52. Ans. 5. We further agree with the Examiner that it would have
been obvious for a person of ordinary skill in the art to provide the on-board
metal hydride hydrogen storage unit of Murphy to the exhaust purifying
systems of Yamamoto or Oshima because it is “the mere application of a
known technique to a piece of prior art ready for the improvement.” KSR
Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 417 (2007). See Ans. 4, 5.
In conclusion, we find that the combined teachings of Yamamoto,
Breuer, and Murphy, and Oshima, Breuer, and Murphy, disclose a
“hydrogen source consisting of a hydrogen storage unit,” in which the
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“hydrogen [is] stored in the form of …hydride.” Accordingly, for the
foregoing reasons, the rejection of claim 1, and the rejection of claims 2 and
18 under 35 U.S.C. § 103(a) is sustained.
With respect to claims 3-10, 12-16, and 19, which depend from
independent claims 2 and 18, Appellant merely reiterates the claim
limitations and does not present separate arguments for patentability. App.
Br. 17-18. “A statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim.” See
37 C.F.R. § 41.37(c)(1)(vii)(2008). Appellant further makes the same
argument as made against the rejection of claim 2 under 35 U.S.C. § 103(a)
as being unpatentable over Oshima, Breuer, and Murphy. App. Br. 18. We
find Appellant’s argument unpersuasive for the reasons discussed above.
Accordingly, we find that the rejection of claims 3-10, 12-16, and 19 under
35 U.S.C. § 103(a) as unpatentable over Oshima, Breuer, and Murphy is
likewise sustained.
Regarding claim 11, Appellant argues that the application of Pfeifer
does not cure the perceived deficiencies of Oshima, Breuer, and Murphy.
App. Br. 21. Similarly, with respect to claim 17, Appellant argues that the
application of Choi does not cure the perceived deficiencies of Oshima,
Breuer, and Murphy. App. Br. 24. For the reasons discussed above, we find
no deficiencies in the underlying combination of Oshima, Breuer, and
Murphy, and thus the Appellant’s arguments are not persuasive.
Accordingly, the Appellant’s arguments do not persuade us that the
Examiner erred in rejecting claims 11 and 17. That is, the rejections of
claim 11 under 35 U.S.C. § 103(a) as unpatentable over Oshima, Breuer,
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Murphy, and Pfeifer and of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Oshima, Breuer, Murphy, and Choi, are sustained.

CONCLUSION
Appellant has failed to demonstrate that the Examiner erred in finding
that the combined teachings of Yamamoto, Breuer, and Murphy, and
Oshima, Breuer, and Murphy, disclose an on-board hydrogen storage unit in
which the hydrogen is stored in the form of a hydride.

DECISION
The Examiner’s decision to reject claims 1-19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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