Ex Parte Kubinski et al

Patent Trial and Appeal Board

Jul 7, 2016

12469874 (P.T.A.B. Jul. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/469,874 05/21/2009 David Kubinski
36865 7590 07/07/2016
ALLEMAN HALL MCCOY RUSSELL & TUTTLE, LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
81195716 2734
EXAMINER
ROSENWALD, STEVEN ERIC
ART UNIT PAPER NUMBER
1759
MAILDATE DELIVERY MODE
07/07/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID KUBINSKI, RICHARD SOLTIS, JACOBUS H. VISSER,
YI DING, and MICHAEL HOWARD PARSONS 1
Appeal2015-000654
Application 12/469,874
Technology Center 1700
Before BRADLEY R. GARRIS, CHUNG K. PAK, and
N. WHITNEY WILSON, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-7.2 We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellants claim methods of operating a NOx sensor having a
pumping electrode configuration and a measuring electrode configuration,
the method comprising operating in a first update operating mode (see, e.g.,
1 Ford Global Technologies, LLC is identified as the real party in interest.
App. Br. 3.
2 Previously rejected claims 8 and 9 have been canceled (see, e.g., Ans. 11 ).
Appeal2015-000654
Application 12/469,874
Fig. 6) in response to certain conditions and operating in a second alternate
update operating mode (see, e.g., Fig. 7) in response to certain other
conditions (independent claims 1 and 7 which are the only independent
claims on appeal).
Further details regarding these methods are set forth in claims 1 and 7,
a copy of which taken from the Claims Appendix of the Appeal Brief
appears below.
1. A method of operating a NOx sensor, wherein the sensor
includes a pumping electrode configuration and a measuring electrode
configuration, the method comprising:
operating in a first update operating mode responsive to determining
that the NOx sensor is operating under first conditions that cause an absence
ofNOx in exhaust gas, the first update operating mode including removing
NOx and at least a portion of 02 from the sensor;
determining that the NOx sensor is operating under second conditions
that cause a change in residual 02 reaching the measuring electrode
configuration; and
responsive to the determining, operating in a second, alternate update
operating mode, the second, alternate update operating mode including,
applying a first measuring voltage across the measuring
electrode configuration sufficient to electrochemically remove 02
from the sensor without electrochemically removing NOx from the
sensor; and
applying a second measuring voltage across the measuring
electrode configuration sufficient to electrochemically remove NOx
from the sensor.
7. A method of operating a NOx sensor, wherein the sensor
includes a pumping electrode configuration and a measuring electrode
configuration, the method comprising:
applying a first pumping voltage across the pumping electrode
configuration sufficient to electrochemically remove NOx and 02 from the
sensor;
applying a first measuring voltage across the measuring electrode
configuration sufficient to electrochemically remove NOx from the sensor;
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Application 12/469,874
responsive to detecting no change in residual 02 reaching the
measuring electrode configuration, operating in a first update operating
mode, the first operating mode including removing NOx and at least a
portion of 02 from the sensor; and
responsive to detecting a change in residual 02 reaching the
measuring electrode configuration, operating in a second, alternate update
operating mode, the second, alternate update operating mode including,
applying a second measuring voltage across the measuring
electrode configuration sufficient to electrochemically remove 02
from the sensor without electrochemically removing NOx from the
sensor; and
applying a third measuring voltage across the measuring
electrode configuration sufficient to electrochemically remove NOx
from the sensor.
The Examiner rejects claims 1---6 under 35 U.S.C. § 112 as failing to
comply with the particularity and distinctness requirement of the second
paragraph (Ans. 5)3 and as failing to comply with the written description and
enablement requirements of the first paragraph (id. at 2-5).
The Examiner rejects claim 7 under 35 U.S.C. § 102(b) as anticipated
by, or under 35 U.S.C. § 103(a) as obvious over, Kurokawa (US 6,295,862
Bl, Oct. 2, 2001) (Ans. 6-9).
The § 112 Rejections of Claims 1---6
According to the Examiner, indefiniteness is created by the claim 1
recitation "the NOx sensor is operating under first conditions that cause an
3 The Examiner inadvertently lists claim 7 in this rejection (id.) but
subsequently clarifies that "all rejections of claim 7 under 35 U.S.C. 112 ...
second paragraph have been withdrawn" (id. at 16).
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Appeal2015-000654
Application 12/469,874
absence ofNOx in exhaust gas, the first update operating mode including
removing NOx" because "it is unclear how NOx can be removed when it is
absent from the exhaust gas" (Ans. 5).
However, as correctly explained by Appellants, "the claim does not
recite removing NOx from exhaust gas ... [but rather] removing NOx from
the sensor when operating under conditions that cause an absence ofNOx in
the exhaust gas" (Reply Br. 8). Indeed, claim 1 expressly recites "the first
update operating mode including removing NOx ... from the sensor." In
light of this express recitation, no basis exists for the Examiner's position
that claim 1 lacks clarity concerning NOx removal. For completeness, we
emphasize that NOx may be absent from the exhaust gas but nevertheless
present in the sensor as a result of operations preceding the conditions
causing an absence ofNOx in the exhaust gas.
The Examiner also considers claim l to be indefinite due to the
recitation "responsive to the determining" because it is unclear which of the
two prior determining steps is being referred to by this recitation (Ans. 5).
We agree with Appellants that it is reasonably clear the recitation
refers to the prior claim 1 step of "determining that the NOx sensor is
operating under second conditions" (Reply Br. 10). As more fully explained
by Appellants, one having ordinary skill in this art would not interpret the
recitation as referring to the prior claim 1 step "operating in a first update
operating mode responsive to determining that the NOx sensor is operating
under first conditions" because, for example, the claim 1 step in question
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Application 12/469,874
(i.e., "responsive to the determining") expressly recites operating in a second
alternate update operating mode (id.).
For these reasons, we do not sustain the Examiner's§ 112, second
paragraph, rejection of claims 1---6.
In support of non-enablement, the Examiner states that "Applicants do
not teach removing an analyte (NOx) that is absent from (not present in)
exhaust gas within the sensor ... such that one of skill in the art cannot
predict how to remove something that is already absent" (Ans. 4).
For the reasons given by Appellants (see, e.g., App. Br. 15) and
analogous to those discussed above, the Examiner's non-enablement
position is based on an incorrect interpretation of claim 1. Appellants
correctly explain that they expressly teach removing NOx from internal
cavities of the sensor (id. (citing Spec. 11-12, Fig. 6 block 618)).
As a consequence, we also do not sustain the Examiner's§ 112, first
paragraph, rejection of claims 1---6 for failing to comply with the enablement
requirement.
The Examiner believes that Appellants' original disclosure contains
no written description of the claim 1 limitation "the NOx sensor is operating
under first conditions that cause an absence ofNOx in the exhaust gas, the
first update operating mode including removing NOx and at least a portion of
02 from the sensor" (Ans. 2-3). According to the Examiner, "[t]he sections
of the specification cited by Applicant as support for the amendment ... do
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Application 12/469,874
not teach operation in the absence ofNOx for removal ofNOx, so the
limitation is considered to be drawn to new matter" (id. at 3).
Once again, Appellants explain that "the claim recites removing NOx
from the sensor while operating under conditions that cause an absence of
NOx in the exhaust gas" (App. Br. 13). Further, Appellants explain that
"FIG. 6, block 618 of the subject application shows exactly what the
rejection asserts is missing" (id.). We agree. As above, the Examiner's
position appears to be based on an incorrect interpretation of claim 1.
Therefore, we do not sustain the Examiner's§ 112, first paragraph,
rejection of claims 1---6 for failing to comply with the written description
requirement.
The Prior Art Rejections
The Examiner finds that claim 7 is anticipated by Kurokawa (Ans. 6-
8). In support of this finding, the Examiner refers to Kurokawa's
embodiment involving input voltage lines LX2 and LX3 (see, e.g., id. at 7-
8) as well as the embodiment involving electromotive force (see, e.g., id. at
16-18). The Examiner's finding is based, at least in part, on the theory of
inherency (see, e.g., id. at 18, 21 ).
We agree with Appellants that Kurokawa does not disclose the claim
7 limitations "responsive to detecting no change in residual 02 reaching the
measuring electrode configuration, operating in a first update operating
mode" and "responsive to detecting a change in residual 02 reaching the
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Application 12/469,874
measuring electrode configuration, operating in a second, alternate update
operating mode" including the specific limitations recited in claim 7
regarding these operating modes (see, e.g., App. Br. 24--26, Reply Br. 11-
13). The Kurokawa disclosures cited by the Examiner do not expressly
disclose these limitations. Moreover, the Examiner fails to provide an
adequate basis in fact and/or technical reasoning to reasonably support a
determination that these limitations inherently and necessarily flow from the
teachings of Kurokawa. See, e.g., Ex parte Levy, 17 USPQ2d 1461, 1464
(BP AI 1990) ("In relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.").
For example, the Examiner does not convincingly explain how
Kurokawa's LX2 and LX3 disclosures inherently result in the claim 7 first
and second update operating modes respectively in response to detecting no
change versus a change in residual 02 reaching the measuring electrode
configuration or the specific aspects of these operating modes as recited in
the claim. The Examiner likewise fails to provide an adequate basis for
considering these claim limitations to flow inherently from the electromotive
force disclosures of Kurokawa. For these reasons, the Examiner does not
establish a prima facie case of anticipation.
It follows that the § 102 rejection of claim 7 will not be sustained.
As for the § 103 rejection, the Examiner concludes "it would have
been obvious to a person having ordinary skill in the art at the time the
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Application 12/469,874
invention was made that application of the voltages LX2 and LX3 ( c 15: 15-
19) is in response to detected offset changes/residual 02 changes is [sic] a
result of deterioration ( c 14: 11-15), as Kurokawa teaches ( c2:31-37)
measurement of first and second electric currents is to compensate for an
oxygen-caused error component of the second electric current" (Ans. 9).
Similarly, the Examiner concludes "it would also have been obvious to a
person having ordinary skill in the art at the time the invention was made to
operate in a second, alternate update operating mode based on the combined
teachings of Kurokawa" (id. at 17).
The deficiency of these obviousness conclusions is that they are
merely conclusory statements unsupported by reasoning with rational
underpinning regarding the specific limitations recited in claim 7. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections 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") quoted with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). This deficiency reveals
that the Examiner fails to establish a prima facie case of obviousness.
Therefore, the § 103 rejection of claim 7 also will not be sustained.
Conclusion
The decision of the Examiner is reversed.
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