Ex Parte Gonze et al

Patent Trial and Appeal Board

Jul 18, 2013

11209427 (P.T.A.B. Jul. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EUGENE V. GONZE and FRANK AMENT
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Appeal 2013-007340
Application 11/209,427
Technology Center 3700
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Before EDWARD A. BROWN, MICHAEL L. HOELTER and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/209,427

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 22-29. App. Br. 5. Claims 1-21 have been cancelled.
App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-
PART.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to diesel engines, and more
particularly to diesel particulate filter (DPF) regeneration.” Spec., para.
[0001]. Independent claim 22 is illustrative of the claims on appeal and is
reproduced below:
22. A system for a vehicle, the system comprising:
a diesel particulate filter (DPF) that filters particulates in
exhaust output from an engine of the vehicle;
an electric heater disposed a first non-zero distance
upstream of the DPF and a second non-zero distance
downstream of an oxidation catalyst, wherein the electric heater
includes a plurality of channels to heat the particulates in the
exhaust flowing from the oxidation catalyst to the DPF; and
a control module that:
determines whether to initiate regeneration of the
DPF, wherein the regeneration includes ignition of
particulates stored in the DPF,
activates the electric heater to initiate the
regeneration in response to the determination, wherein
when the electric heater is activated heat transfers from
the electric heater to the particulates in the exhaust, and
heat from the particulates in the exhaust causes
particulates stored in the DPF to ignite for a first period,
and
de-activates the electric heater based on an
expiration of a threshold period,
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wherein the first period is greater than the threshold
period, and after the electric heater is deactivated, the
regeneration continues for a remainder of the first period.

REFERENCES RELIED ON BY THE EXAMINER
Araki US 5,711,149 Jan. 27, 1998
Kuboshima US 7,051,519 B2 May 30, 2006
Kojima JP 2003-027922 Jan. 29, 2003

THE REJECTIONS ON APPEAL
1. Claims 22, 25, 26 and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kojima and Araki. Final 31.
2. Claims 23, 24, 27 and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kojima, Araki and Kuboshima. Final 4.

ANALYSIS
The rejection of claims 22, 25, 26 and 29
as being unpatentable over Kojima and Araki
Appellants argue independent claim 22 separately and contend that
claims 25, 26 and 29 “should therefore be allowable for at least similar
reasons.” App. Br. 13, 16. Accordingly, claims 25, 26 and 29 stand or fall
with claim 22.

1 The Examiner’s Answer incorporates “[e]very ground of rejection set forth
in the Office action dated 5/18/12 from which the appeal is taken” (but
withdraws the rejection under 35 U.S.C. 112, first paragraph). Ans. 3.
These grounds of rejection are not repeated in the Examiner’s Answer. Ans.
3. Accordingly, we distinguish our specific reference to these grounds of
rejection stated in the above Final Office action from our specific reference
to the Examiner’s Answer by employing, respectively, the terms “Final” and
“Ans.”
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Claim 22 includes the limitation of an electric heater disposed in an
exhaust system “upstream” a diesel particulate filter (DPF) and
“downstream” an oxidation catalyst. This intermediate heater heats “the
particulates in the exhaust flowing from the oxidation catalyst to the DPF.”
Claim 22 further includes a control module that activates the heater to
transfer heat “from the electric heater to the particulates in the exhaust”
which causes the particulates stored in the downstream DPF “to ignite for a
first period.” The control module also de-activates the heater “based on an
expiration of a threshold period” and claim 22 further includes the limitation
that “the first period is greater than the threshold period” such that “after the
electric heater is deactivated, the regeneration [of the DPF] continues for a
remainder of the first period.” In other words, particulate burning in the
filter continues (first period) even after the heater is de-activated (threshold
period).
The Examiner primarily relies on Kojima for disclosing the claimed
limitations, including the heater (31) being placed upstream a DPF (23) and
downstream an oxidation catalyst (22). Final 3 referencing Kojima Fig. 1,
see also Kojima paras. [0033] and [0036]. The Examiner also finds that
Kojima’s heater (31) “heat[s] the particulates in the exhaust flowing from
the oxidation catalyst to the DPF.” Final 3 referencing Kojima para. [0036].
However, the Examiner acknowledges that Kojima “fails to disclose
deactivating the electric heater based on an expiration of a threshold period”
and for that feature, the Examiner relies on Araki for “teach[ing] activating
an electric heater for only an initial time period of a DPF regeneration
process, that is less than a total time period of a DPF regeneration process.”
Final 4, referencing Araki 4:16-31 and 4:54 to 5:30. The Examiner
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concludes that it would have been obvious “to have utilized the teaching of
Araki in the system of Kojima for the purpose of saving electric power”
(italics added). Final 4.
Appellants acknowledge the location of Kojima’s heater, and more
specifically that “Kojima teaches a filter heating means 31 that is disposed
upstream of a filter 23 and downstream of a catalyst carrier 22.” App. Br. 14
referencing Kojima Abstract and Fig. 1, see also Reply Br. 6. Appellants
also acknowledge Kojima’s lack of a teaching regarding the de-activation of
the heater. App. Br. 14. In this regard, Appellants state that “Araki teaches
an electric heater unit 7 that is located upstream of oxidation catalyst 5” and
that because Araki’s heater 7 “is located upstream,” Araki’s heater can be
used to warm oxidation catalyst 5 such that “during regeneration, Araki
turns OFF the electric heater 7.” App. Br. 14, 15 referencing Araki 3:3-8,
4:57-59 and 5:3-5, see also Reply Br. 6. In other words, Appellants
acknowledge that Araki discloses de-activating heater 7 during the
regeneration process but that Araki’s heater is located upstream the
oxidation catalyst and not “downstream” as claimed. App. Br. 14-16, Reply
Br. 6, 7. Appellants seem to have misconstrued the Examiner’s rejection in
that the Examiner relies on Kojima, not Araki, for disclosing the
upstream/downstream orientation of the various components within the
exhaust stream. Final 3. Appellants do not dispute that Araki’s heater is de-
activated during regeneration and it is this specific disclosure that the
Examiner relied upon when referencing Araki; not Araki’s orientation of the
various components or its heating of the oxidation catalyst. Final 4. More
succinctly, Appellants contend that the Examiner “ignores the fact that
[Kojima’s] filter heating element 31 could not be used to warm the oxidation
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catalyst [22] in Kojima” (App. Br. 15, see also Reply Br. 7) but the
Examiner does not rely on Kojima’s heater 31 for heating Kojima’s
oxidation catalyst 22 as asserted nor is such heating of the catalyst claimed.
Accordingly, Appellants’ contention is not persuasive.
Appellants also contend that “regeneration would not continue
without the use of the filter heating means 31.” Reply Br. 7. This is
contrary to the teachings of Araki which state that once the particulates are
burned, they continue downstream “so that the particulates are burned at the
filter 4” and further that “the filter 4 is heated by the burning heat of the
particulates” hence, the particulates continue burning after being ignited
upstream. Araki 5:6-16. Such continued burning is also consistent with the
Examiner’s finding that “[o]ne with ordinary skill in the art should
immediately recognize that solid carbonaceous material [i.e. particulates or
soot] takes a relatively long time to be completely burned off.” Ans. 4.
Accordingly, as it is not disputed that it is the burning of the particulates in
the downstream filter that causes regeneration, Appellants’ contention is not
persuasive.
Appellants further contend that it is improper for the Examiner to
“pick and choose” portions of Kojima and Araki to support the Examiner’s
position and instead should “consider the teachings of Kojima and Araki as
a whole.” App. Br. 16, see also Reply Br. 7. However, the Supreme Court
has provided guidance when addressing Appellants’ concern regarding
picking and choosing.
As is clear from cases such as Adams, a patent composed of
several elements is not proved obvious merely by
demonstrating that each of its elements was, independently,
known in the prior art. Although common sense directs one to
look with care at a patent application that claims as innovation
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the combination of two known devices according to their
established functions, it can be important to identify a reason
that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed
new invention does. This is so because inventions in most, if
not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007).
Here, there is no dispute that the elements relied on by the
Examiner are known in the prior art and Appellants do not dispute that
turning off the heater saves power which is the Examiner’s stated
reason for prompting one skilled in the art to combine Kojima and
Araki. Final 4. Accordingly, Appellants’ contention regarding the
Examiner picking and choosing elements and not considering the art
as a whole is not persuasive. In view of the record presented, we
sustain the Examiner’s rejection of claims 22, 25, 26 and 29.

The rejection of claims 23, 24, 27 and 28
as being unpatentable over Kojima, Araki and Kuboshima
Dependent claims 23 and 27 differ from claims 24 and 28. Claims 23
and 27 include the limitation that the filter is regenerated in response to an
exhaust flow rate that “is greater than a threshold flow rate” while claims 24
and 28 include the limitation that the filter is regenerated in response to an
exhaust flow rate that “is within a predetermined range.” The Examiner
relies on the additional reference to Kuboshima for teaching “initiating the
regeneration of the DPF in response to a determination that an exhaust flow
rate is greater [than] a threshold flow rate.” Final 5 referencing Kuboshima
Fig. 9 and particularly step S202.
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Regarding claims 23 and 27, Appellants simply state that “Kuboshima
does not remedy the deficiencies of Kojima and Araki.” App. Br. 17, Reply
Br. 8. This contention is not persuasive for the reasons previously
addressed. However, with respect to claims 24 and 28, Appellants
additionally contend that the Examiner has failed to address the stated
limitation directed to being “within” a certain range rather than being
“greater than” a certain rate. App. Br. 17, see also Reply Br. 8-9.
Appellants contend that with respect to the “within a predetermined range”
limitation of claims 24 and 28, “[t]he Examiner failed to provide the
reasoning and rational underpinning required to reject claims 24 and 28 as
being obvious”.2 App. Br. 18, Reply Br. 9. More specifically, Appellants
contend that while “Kuboshima teaches use of a single threshold,
Kuboshima is silent as to determining whether an exhaust flow rate is within
a predetermined range” and the Examiner “ignores this difference between
Kuboshima and the explicit limitations of claim 24.” Reply Br. 9.
In the record before us, the Examiner reasons that
[i]t would have been obvious for one having ordinary skill in
the art to modify Kojima by initiating filter regeneration when
an exhaust flow rate is within a predetermined range as taught
by Kuboshima, since the use thereof would have reduced an
error for computing the amount of accumulated particulate
matter in the filter in order to timely regenerate the filter (see
col. 10, lines 50-57 in Kuboshima).

2Appellants state “that ‘rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” App. Br. 18, Reply Br. 9 citing In re Kahn, 441
F. 3d 977, 988 (CA Fed. 2006).
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Ans. 5. However, Kuboshima is specifically directed to ascertaining
whether a flow rate is greater than a certain value (Kuboshima 10:3-5 and
Fig. 9) and provides no indication whether there is another value or an upper
limit so as to specify a range of acceptable values. The Examiner’s focus on
reducing error (discussed at Kuboshima 10:50-57) is with respect to
determining which method of computation is to be employed even though
both are based on a determination of whether or not the value compared is
greater than a predetermined value. See Kuboshima Fig. 9 and particularly
steps S202 thru S206. Accordingly, we agree with Appellants that the
Examiner fails to provide a rational underpinning to support the conclusion
of obviousness with respect to determining whether an exhaust flow rate “is
within a predetermined range” as set forth in claims 24 and 28. See App. Br.
18, Reply Br. 9. Based on the record presented, we reverse the Examiner’s
rejection of claims 24 and 28.

DECISION
The Examiner’s rejections of claims 22, 23, 25-27 and 29 are
affirmed.
The Examiner’s rejection of claims 24 and 28 is reversed.
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).

AFFIRMED-IN-PART

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