Ex Parte Voss et al

Patent Trial and Appeal Board

Aug 28, 2014

10858656 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte KENNETH E. VOSS, STANLEY ROTH,
JOSEPH C. DETTLING, GARY W. RICE, YIU KWAN LUI,
and MAHMOUD YASSINE
__________

Appeal 2013-005571
Application 10/858,6561
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 4–9, 11–20, 22–30, 32–37, 41, and 42. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).

1 This application was the subject of a previous appeal (Appeal No. 2010-
003395).
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We AFFIRM.
Appellants’ invention is directed to an apparatus comprising a
catalytic element in communication with a catalyzed filter element (Spec. 1:
6–7).
Claim 1 is illustrative:
1. An apparatus comprising:
a diesel engine having an exhaust outlet in communication with an
exhaust pipe along an exhaust conduit;
a catalyzed soot filter for burning off carbonaceous particulates in the
exhaust conduit in communication with the exhaust outlet, the catalyzed soot
filter comprising a first catalyst comprising a first catalyst composition
which comprises:
a first platinum group metal; and
a first cerium component; and
a second catalyst in communication with the first catalyst, at least a
portion of the second catalyst located at a separate location along the exhaust
conduit selected from the group consisting of between the engine exhaust
outlet and the first catalyst, and between the first catalyst and the exhaust
pipe, the second catalyst comprising a second catalyst composition which
comprises:
a second cerium component.

Appellants appeal the following rejections:
1. Claims 1, 4–9, 11–18, 20, 30, 36, and 37 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nishizawa (US 5,108,716,
patented Apr. 28, 1992) in view of Torres (US 4,082,514, patented
Apr. 4, 1978) and Leyrer et al. (US 5,643,542, patented July 1, 1997).
2. Claims 22–29, 32–35, and 41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nishizawa in view of Torres, Leyrer and
further in view of Schmelz (US 5,833,932, patented Nov. 10, 1998).
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3. Claims 19 and 42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishizawa in view of Torres and Leyrer and further
in view of Koermer et al. (US 6,548,446 B1, patented Apr. 15, 2003).

Appellants’ arguments focus on sole independent claim 1 only (App. Br.
6–12). Accordingly, the rejection of the dependent claims under rejections
(1), (2), and (3) will stand or fall with our analysis of the rejection of claim
1.
ISSUE
Did the Examiner reversibly err in concluding that the combined
teachings of Nishizawa, Torres, and Leyrer would have suggested the
subject matter of claim 1 that includes a catalyzed soot filter in the exhaust
conduit in communication with the exhaust outlet of a diesel engine? We
decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
Appellants argue that Nishizawa discloses a three-way catalyst that at
the time Appellants’ claimed invention was made would have been
understood to be used solely with a stoichiometric gasoline engine, not a
diesel engine (App. Br. 9–11). Appellants contend that Leyrer discloses
problems with using three-way catalysts with diesel engines (i.e., lean burn
engines) because the three-way catalysts can react with the nitrogen oxides
in the exhaust to form NO2 which is detrimental to the environment (App.
Br. 9). Appellants contend that since neither Nishizawa nor Torres teaches
a diesel engine, no prima facie case of obviousness exists (App. Br. 10).
Appellants contend that the Declarations of Dr. Robert Farrauto dated July
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16, 2008, and February 24, 2012 (hereinafter Farrauto Declaration 1 and
Farrauto Declaration 2, respectively) establish that Nishizawa’s three-way
catalyst would have been used in a gasoline engine, not a diesel engine,
because of the problems associated with three-way catalysts and diesel
engines (App. Br. 10–11). Appellants contend that the Examiner has not
meaningfully considered Farrauto Declarations 1 and 2 (App. Br. 11–12).
Appellants’ arguments regarding Nishizawa, Torres, and Leyrer are
not persuasive because they improperly attack the references individually
instead of addressing the Examiner’s stated rejection based upon the
combined teachings of the prior art and what the teachings would have
suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425
(CCPA 1981). The Examiner finds that Nishizawa teaches the catalyst
structure, but fails to teach a catalyzed soot filter2 with a wall flow structure
for trapping soot or explicitly a diesel engine filter (Ans. 3–4). The
Examiner finds that Nishizawa’s disclosure of an internal combustion engine
includes both diesel and gasoline engines as taught by the Encyclopedia
Britannica (Ans. 4). The Examiner finds that Torres discloses placing a
catalyzed soot filter in the exhaust pipe of a diesel engine to convert
polluting gases into non-polluting gases (Ans. 4). The Examiner further
finds that Leyrer discloses a wall flow structure for a catalyst support for use
in both gasoline or diesel engines (Ans. 4). The Examiner further finds that
Leyrer discloses using a three-way catalytic converter in a lean-burn

2 We construed “catalyzed soot filter” in the previous appeal as “a filter
material structure that is capable of physically trapping or filtering dry solid
carbonaceous particles and having within the filter an oxidation catalyst
material such as cerium and platinum to generate heat via oxidation
(exothermic reaction) and burn off the trapped carbonaceous particles”
(Appeal No. 2010-003395 Decision, 4).
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gasoline engine or a diesel engine (Ans. 10). The Examiner finds that
Leyrer discloses an improvement over conventional three-way catalysts that
permit the catalysts to purify the exhaust and reduce nitrogen oxides,
hydrocarbons, and oxygen containing organic compounds by using a gas
permeable inert support coated with an active catalytic component that
includes a platinum group metal and a base metal compound that includes
cerium (Ans. 10). The Examiner finds that Leyrer discloses the same
catalytic materials used in Nishizawa’s three-way catalyst, which Appellants
do not dispute (Reply Br. generally).
The Examiner concludes that it would have been obvious to replace
the honeycomb substrate of Nishizawa with that of Leyrer (i.e., to have the
honeycomb in Nishizawa comprise a gas permeable inert support) in order to
allow for additional reduction of nitrogen oxides, amounts of hydrocarbons,
oxygen containing organic compounds, carbon monoxide and to permit
filtering of the soot from the diesel exhaust (Ans. 11).
Indeed, Leyrer discloses problems with known exhaust gas
purification processes (e.g., three-way catalysts) that enable only the
hydrocarbons and carbon monoxide contained in the exhaust of lean burn
engines (e.g., diesel engines) to be converted into harmless compounds
while the nitrogen oxides may be partially converted into nitrogen dioxide,
which is detrimental to the environment (col. 1, ll. 50–62). Leyrer discloses
that the object of the patented invention is to provide a process which
enables the purification of exhaust gas from lean-burn gasoline engines and
from diesel engines to be improved by permitting the reduction of nitrogen
oxides (col. 2, ll. 34–37). Leyrer discloses that an “essential factor” in the
process is the use of aluminum silicate, which is formed into an aqueous
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dispersion and applied to the inert support (col. 2, ll. 60–65, col. 4, ll. 55–
61).
The Examiner’s rejection is based upon modifying Nishizawa’s
catalyst to have Leyrer’s wall flow structure and gas permeable inert support
to permit the reduction of nitrogen oxides in diesel exhaust gases as taught
by Leyrer. As noted by the Examiner and not contested by Appellants, both
Nishizawa and Leyrer use the same catalysts. Therefore, the combined
teachings of the prior art would have suggested modifying Nishizawa’s
three-way catalyst with Leyrer’s three-way catalytic structure in order to
permit the effective removal of nitrogen oxides from diesel exhaust.
Whether or not Nishizawa teaches a three-way catalyst for a gasoline engine
is not dispositive of the propriety of the Examiner’s rejection of claim 1
because it is the combined teachings of Leyrer and Nishizawa that would
have suggested modifying conventional three-way catalysts to make them
suitable for use in diesel engines.
Contrary to Appellants’ argument that the Examiner has not
considered meaningfully the Farrauto Declarations 1 and 2, we find that the
Examiner has fully considered the opinion evidence contained in the
Farrauto Declarations 1 and 2. As the Examiner finds, the Farrauto
Declarations fail to provide sufficient factual evidence to support the opinion
evidence contained therein (Ans. 12).
Appellants cite to US Patent 7,141,226 in the Reply Brief as an
attempt to establish that one of ordinary skill in the art would have
understood that Nishizawa is directed to stoichiometric gasoline engines, not
diesel engines. Appellants have not directed us to where US Patent
7,141,226 is made of record in the application. Appellants’ citation to this
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new evidence in the Reply Brief violates our rule 37 C.F.R. § 41.41(b)(1)
(2013). Accordingly, we shall not consider such evidence. Ex parte
Borden, 93 USPQ2d 1473, 1474–75 (BPAI 2010) (informative).
On this record, we affirm the Examiner’s § 103 rejections.

DECISION
The Examiner’s decision 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)(1).

ORDER
AFFIRMED

cdc