Ex Parte 7498010 et al

Patent Trial and Appeal Board

Jun 7, 2016

95002220 (P.T.A.B. Jun. 7, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,220 09/13/2012 7498010 139-0006/RX 8237
114575 7590 06/07/2016
Brummett TechLaw PLLC
2201 Cooperative Way
Suite 600
Herndon, VA 20171
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/07/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

BASF CORPORATION
Requester

v.

HJS EMISSIONS TECHNOLOGY GMBH & CO. KG, JOHNSON
MATTHEY PLC, AND DAIMLER AG
Patent Owners and Appellants
____________

Appeal 2015-006388
Reexamination Control 95/002,220
Patent 7,498,010 C1
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owners, Johnson Matthey Public Limited Company, Daimler
AG, and HJS Fahrzeugtechnik GmbH & Co KG, appeal from the Patent
Examiner’s decision to reject claims 1-9, 11, 13-16, and 21 under 35 U.S.C.
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§ 1031 in an inter partes reexamination of U.S. Patent 7,498,010 C12
(hereinafter, “the ’010 Patent”), which issued March 3, 2009 to Andreasson
et al. See Patent Owners’ Appeal Brief 1, filed August 27, 2014 (“PO App.
Br.”). The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b),
134, and 315. We AFFIRM.
I. BACKGROUND
A request for inter partes reexamination under 35 U.S.C. §§ 311-318
and 37 C.F.R. §§ 1.902-1.997 for the ’010 patent was filed September 13,
2012, by Third-Party Requester BASF Corporation. Request for Inter Partes
Reexamination (“Request”); Requester Respondent Brief iii, dated
September 29, 2014 (“Req. Res. Br.”).
Patent Owners have identified that the ’010 patent is related to U.S.
Patent 6,805,849 (“the ’849 patent”), which was the subject of
Reexamination 95/002,211, for which a Reexamination Certificate was
issued on December 2, 2014, cancelling all of the claims of the ’849 patent.
PO App. Br. 1. The ’010 patent is also related to U.S. Patent 8,142,747
(“the ’747 patent”), which is the subject of Reexamination 95/002,217 is
currently on appeal, and has been assigned Appeal 2015-006925. A decision
on appeal for the ’747 patent is being issued concurrently.

1 Claims 1-9, 11, and 13-21 are subject to reexamination. PO App. Br. 1.
Claims 1-9, 11, and 13-21 all stand rejected. Right of Appeal Notice 1,
mailed May 16, 2014 (“RAN”). However, Patent Owners do not appeal any
of the rejections of claims 17-20, which are accordingly maintained.
2 The ’010 patent was subject to ex parte reexamination 90/011,941, which
resulted in the issuance of a Reexamination Certificate issued October 23,
2012, in which claims 1 and 2 were amended and original claims 10 and 12
were cancelled.
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The ’010 patent is drawn to an improved Selective Catalytic
Reduction (SCR) catalyst system, comprising in combination and in order,
an oxidation catalyst effective to convert NO to NO2, a particulate filter, a
source of reductant fluid and downstream of said source, an SCR catalyst.
Col. 1, ll. 33-37. In such a system, a gas stream containing particulates is
passed over an oxidation catalyst under conditions effective to convert at
least a portion of NO in the gas stream to NO2, removing at least a portion of
the particulates, adding reductant fluid, namely NH3, to the gas stream
containing enhanced NO2 to form a gas mixture, and passing the gas mixture
over an SCR catalyst. Col. 1, ll. 38-45 and col. 2, ll. 33. According to the
’010 patent, the oxidation catalyst provides an NO2/NO ratio that is “the
most beneficial such ratio for the particular SCR catalyst,” which includes
conversion of “all NO to NO2” for metal/zeolite SCR catalysts but providing
“some NO” in an otherwise “high ratio” for rare-earth based catalysts. Col.
2, ll. 1-10. Further, the presence of a particulate filter minimizes the levels
of hydrocarbons in the SCR catalyst and improves conversion of NOx. Col.
1, ll. 65-67 and col. 2, ll. 10-12.
Claim 1 is representative of the claims on appeal and reads as follows
(with indentations added for clarity and underlining to show added text and
brackets to show deleted text from the original patented claim):
1. A method of reducing pollutants, including particulates
and NOx, in a gas stream, [comprising] consisting essentially of
passing said gas stream over an oxidation catalyst under
conditions effective to convert a portion of NO in the gas
stream to NO2 to produce a gas mixture comprising a mixture
of NO and NO2, wherein the gas mixture has an enhanced NO2
content relative to the gas stream entering the oxidation
catalyst,
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removing at least a portion of said particulates in a
particulate trap located downstream of the oxidation catalyst,
reacting trapped particulate with NO2 to provide an SCR-
Adjusted gas mixture,
adding and mixing nitrogenous reductant fluid to the
SCR-Adjusted gas mixture [gas stream] to form a composition
comprising reductant and the SCR-Adjusted gas mixture
downstream of said trap, and
passing the composition comprising reductant and the
SCR-Adjusted gas mixture over an SCR catalyst under NOx
reduction conditions and
optionally, a clean-up catalyst downstream of the SCR
catalyst.
PO App. Br. 37-38, Claim App’x.

II. REJECTIONS ON APPEAL
Patent Owners appeal the Examiner’s decision to reject all of the
appealed claims under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable over
either Cooper3 or Hawker,4 in view of additional prior art publications. PO
App. Br. 2-3; see RAN.
Patent Owners do not separately argue any of the claims on appeal,
including separately rejected claims. See generally PO App. Br.
Accordingly, all of the appealed claims will stand or fall with representative
independent claim 1.

3 US 4,902,487 issued February 20, 1990 to Barry J. Cooper et al.
(“Cooper”).
4 P. Hawker, et al., “Experience with a New Particulate Trap Technology in
Europe,” Society of Automotive Engineers Technical Paper Series, No.
970182 (1997) (“Hawker”).
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Patent Owners’ arguments are generally directed towards the
teachings of Cooper and Hawker and generally treat the secondary
references, Avila,5 Alcorn,6 Kasaoka,7 Walker,8 Bell,9 Inoue,10 Matsuda,11
and Tuenter12 as cumulative, i.e., as “the SCR art.” See PO App. Br. 18-20.
We note the Examiner’s findings that Alcorn and Matsuda generally
teach using an oxidation catalyst in addition to an ammonia injected SCR
catalyst reaction for enhanced NOx removal. RAN 4-5 and 39. The
Examiner finds that Kasaoka, Avila, Matsuda and Tuenter all teach
improved reduction of NOx with an NO2/NO ratio within the stated range of
the ’010 patent of 4:3 to 1:3 (i.e., 20-75% NO2/NO) using ammonia SCR
catalysts. See RAN 5, 10, 39, and 45. The Examiner also found that Walker
and Inoue teach avoiding having particulate matter in ammonia SCR
catalysts. See RAN 14 and 26. Similarly, the Examiner found that Bell

5 Avila, “Catalyst for NOx Removal in Nitric-Acid Plant Gaseous Effluents,”
Atmospheric Environment, Vol. 27A, No. 3, pp 443-447, 1993 (“Avila”).
6 US 4,912,776 issued March 27, 1990 to William R. Alcorn (“Alcorn”).
7 Kasaoka et al., “Effect of Inlet NO/NO2 Equimolal Ratio and Role of
Oxygen on Catalytic Reduction of Nitrogen Oxides with Ammonia,” Journal
of Japanese Chemical Society, No.6, pp. 874-991, 1978 (“Kasaoka”).
8 Walker et al., “Development of an Ammonia/SCR NOx Reduction System
for a Heavy Duty Natural Gas Engine,” Society of Automotive Engineers
(Diesel Combustion, Emissions and Exhaust Aftertreatment (SP-931)), pp
171-181, 1992 (“Walker”).
9 US 5,422,085 issued June 6, 1995 to James A.E. Bell et al. (“Bell”).
10 US 4,854,123 issued August 8, 1989 to Akira Inoue (“Inoue”).
11 US 4,351,811 issued September 28, 1982 to Shinpei Matsuda et al.
(“Matsuda”).
12 Tuenter et al., “Kinetics and Mechanism of the NOx Reductio with NH3 on
V2O5-WO3-TiO2 Catalyst,” Ind. Eng. Chem. Prod. Res.
Dev., Vol. 25, No.4, pp 633-636, 1986 (“Tuenter”).
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teaches using a particulate removing soot filter prior to ammonia SCR
catalytic reactions. RAN 20. The Examiner also finds that these optimized
SCR catalyst reactions are capable of removing 80-99% of the NOx in an
exhaust gas stream. See e.g. RAN 10, 14, 26, 40 and 44. Patent Owners do
not dispute these findings. See generally PO App. Br.
The Examiner finds that Cooper teaches placing an oxidation catalyst
upstream from a particulate trap to convert NO of an exhaust gas to NO2,
which then acts as an oxidant for combustion of the trapped particulates.
RAN 3-4. The Examiner acknowledges that Cooper does not specify the
NO to NO2 ratio of the gas exiting the particulate trap, the addition of
reductant fluid or an SCR catalyst. RAN 4.
Similarly, the Examiner finds that Hawker teaches using an oxidation
catalyst upstream from a particulate trap to convert NO of an exhaust gas to
NO2, which is used to oxidize the soot in a downstream particulate trap.
RAN 36. The Examiner finds that Hawker further teaches that the system
reduces total NOx emissions by only 5-8%, but the amount of NO2 increases
from about 5% NO2 to between 20 and 60% of NOx emissions. RAN 37.
Indeed, Hawker teaches
NO2 content increases depending on the catalyst volume and
the temperature as well as on the NO2 consumed during the
particulate combustion in the trap. Increased NO2 emission is
not wanted at the tailpipe, but necessary for the function of the
system. The NO2 content in the exhaust was measured in
different test cycles. An increase of NO2 is shown in Figure 4.3.
Hawker, ¶ spanning pages 6-7. Figure 4.3 is reproduced below.
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Figure 4.3 of Hawker is a bar graph which depicts the influence of the
system described in Hawker, namely an oxidation catalyst converting NO to
NO2 prior to combustion of soot in a particulate trap, on NO2 emissions.
Hawker 8, Fig. 4.3. The graph shows NO2/NOx emissions from bus engines
traveling on two different city bus cycles, UBA and Braunschweig. Id. The
UBA test cycle produced 20% NO2/NOx emissions and the Braunschweig
test cycle produced 60% NO2/NOx emissions. Id.
The Examiner relies on the SCR art to show that treating exhaust gas
with an ammonia injection (“reductant” as in claim 1) and “passing the
composition comprising reductant and the SCR Adjusted gas mixture over
an SCR catalyst under NOx reduction conditions,” as recited in claim 1, was
known in the art at the time of the invention. See e.g., RAN 4-5, 10, 14-15,
20, 25-26, 39-40, and 44-45. This finding is consistent with statements in
the ’010 patent that “[t]he technique named SCR (Selective Catalytic
Reduction) is well established for industrial plant combustion gases, and
may be broadly described as passing a hot exhaust gas over a catalyst in the
presence of a nitrogenous reductant, especially ammonia or urea.” ’010
patent, col. 1, ll. 13-17. This finding is not disputed by the Patent Owners.
See generally PO App. Br.
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The Examiner determined that it would have been obvious to one of
ordinary skill in the art to add a known SCR system for the removal of NOx
downstream of the systems of Cooper or Hawker in order to “provide a
system that optimizes removal of all recognized contaminants of exhaust gas
emissions including [particulates and] NOx.” RAN 6, 15, 21, 30-31, 32-33,
37, 40, 42, and 45.
With respect to the rejections based on the Cooper, the Examiner finds
that the system of Cooper “would certainly produce the SCR-adjusted gas
mixture as evidenced by Hawker.” RAN 7, 12, 15, 17, 19, 21, 22, 24, 27, 28,
30, 31, and 33. The Examiner further relies on post-filing data showing that
the system described in Cooper “inherently provides a gas comprised of an
amount of NO2 ideal for SCR.” RAN 50.
The Examiner finds that Alcorn further teaches conversion of NO to
NO2 via an upstream oxidation catalyst to optimize NOx in SCR systems.
RAN 5. The Examiner further finds that Kasaoka, Avila, Matsuda, and
Tuenter teach SCR systems with maximum NOx reduction at NO/NO2 ratios
that fall within the ranges recited in the claims. RAN 5, 10, 39-40, and 45.
For the particular rejections that include these references, the Examiner
further reasons that the skilled artisan would use NO/NO2 ratios for optimal
NOx reduction in the SCR catalyst and that “combining the two systems
would provide both optimized particulate removal and optimized NOx
removal.” RAN 6, 31, 33, 37, 40, 43, and 45.
The Examiner finds that Inoue further teaches that dust particles
“potentially jeopardize the activity of Inoue’s SCR catalyst.” RAN 26.
Indeed, Inoue teaches that dust entrained in the exhaust gas can clog the
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SCR catalyst (col. 5, ll. 39-43). As discussed above, Walker and Bell have
similar teachings about the disadvantages of particulate matter present in
SCR catalysts. Thus, the Examiner further reasons that the skilled artisan
would have used Cooper or Hawker’s particulate removal systems upstream
from Inoue’s SCR catalyst to avoid the particulate matter from clogging the
SCR catalyst. RAN 26-27.
Patent Owners contend that the Examiner has not shown that it would
have been obvious to one of ordinary skill in the art to perform the recited
step of “reacting trapped particulate with NO2 to provide an SCR-Adjusted
gas mixture” namely because the prior art does not teach using the same
oxidation catalyst to prepare a sufficient amount of NO2 to perform both a
particulate trap combustion reaction and an SCR-catalyst reaction. PO App.
Br. 3-4. Patent Owners also argue that secondary considerations of non-
obviousness, namely evidence of unexpected results, synergy of
components, long-felt but unmet need and commercial success, weigh
against a determination of obviousness. Id. at 4.
The issue before us is: Did the Examiner err in determining, based on
a preponderance of the evidence, that one of ordinary skill in the art would
have a reasonable expectation of success in treating an exhaust gas using a
single oxidation catalyst to convert NO to NO2 in a sufficient quantity to
provide for particulate combustion in an downstream particle trap and have a
residual NO/NO2 ratio suitable for a further downstream SCR catalyst
system in light of Patent Owners’ evidence weighing against such a
determination? We answer this question in the negative.
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Analysis
Claim Interpretation
Neither Patent Owners nor Requester provide a formal proposed
meaning for the recited phrase “reacting trapped particulate with NO2 to
provide a SCR-Adjusted gas mixture.” Patent Owners suggest that an
“SCR-adjusted gas mixture” has the NO/NO2 ratio adjusted “such that it is
beneficial for the SCR catalyst” or that “enough NO2 is generated to enable
use of an SCR catalyst.” PO App. Br. 3-4; see also PO App. Br. 8.
Requester points out that, at the very least, a gas mixture having an NO/NO2
ratio falling within the range expressly recite in new dependent claim 14, i.e.
4:1 to about 1:3 by volume or 20-75% NO2, necessarily meets this claim
requirement. See Req. Res. Br. 3.
The ’010 patent uses the term “adjusted” in only one place which
states “[d]esirably, the NO2/NO ratio is adjusted according to the present
invention to the most beneficial such ratio for the particular SCR catalyst
and CO and hydrocarbons are oxidized prior to the SCR catalyst.” ’010
patent, col. 2, ll. 1-4. The ’010 patent goes on to explain that
for a transition metal/zeolite SCR catalyst it is desirable to
convert all NO to NO2, whereas for a rare earth-based SCR
catalyst, a high ratio is desirable providing there is some NO,
and for other transition metal-based catalysts gas mixtures are
notably better than either substantially only NO or NO2.
’010 patent, col. 2, ll. 5-10. The ’010 patent further states that
We believe that in its presently preferred embodiments, the
present invention may depend upon an incomplete conversion
of NO to NO2. Desirably, therefore, the oxidation catalyst, or
the oxidation catalyst together with the particulate trap if used,
yields a gas stream entering the SCR catalyst having a ratio of
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NO to NO2 of from about 4:1 to about 1:3 by vol, for the
commercial vanadia-type catalyst. As mentioned above, other
SCR catalysts perform better with different NO/NO2 ratios. We
do not believe that it has previously been suggested to adjust
the NO/NO2 ratio in order to improve NOx reduction.
’010 patent, col. 2, l. 64 to col. 3, l. 6.13
At column 1, lines 38-45, it is explained that at least a portion of the
NO in the gas stream is converted into NO2 to form a gas stream containing
enhanced NO2 which is then passed over the SCR catalyst. Thus, these
passages indicate that the “SCR-Adjusted gas mixture” is one in which the
NO/NO2 ratio has been changed by the conversion of some of the NO to
NO2.
Under the doctrine of claim differentiation, the term “SCR-Adjusted
gas mixture” must be broader than merely the NO/NO2 ratio recited in claim
14. The ’010 patent shows that preferred NO/NO2 ratios can vary widely
depending upon the type of SCR catalyst used. Id. col. 2, ll. 5-10. However,
for each of the types described in the ’010 patent, the presence of at least
some NO2 is considered beneficial. The claims are not limited to any
particular amount of NOx removal in the recited system or to an optimal
amount of NOx removal in particular. Thus, the term “SCR-Adjusted gas
mixture” means a gas mixture which has been adjusted by the addition of at
least some NO2 such that there is NO2 present in the gas stream leaving the
particulate trap. However, the NO/NO2 ratio need not be within the most

13 Regarding the last sentence of this quote, we note that the Examiner has
identified Kasaoka, Avila, Matsuda, and Tuenter, which teach SCR systems
with maximum NOx reduction at NO/NO2 ratios that fall within the ranges
recited in the claims.
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desirable range of 4:1 to about 1:3 by volume or 20-75% NO2, which is
shown to be optimal for removal of maximum amounts of NOx in the present
invention, as recited in claim 14.
Cooper and Hawker Rejections
Patent Owners contend that “no NO2 is present downstream of the
particulate filter after the reaction of particulate matter with NO2 in the
Cooper or Hawker exhaust gas treatment.” PO App. Br. 7. On this basis,
Patent Owners argue that “it would be counter to the teachings in the prior
art to place an SCR catalyst system (inclusive of a reductant injection
component) downstream of the Cooper or Hawker exhaust gas treatment
system.” Id.
We disagree with the Patent Owners that the combination of Cooper
or Hawker and an SCR catalyst would not have been obvious to the skilled
artisan at the time of the invention. It is not disputed that SCR catalysts
were used at the time of the invention to scrub up to 25% or more
non-adjusted NOx, which was NO rich, from exhaust gas streams. ’010
patent, col. 1, ll. 13-21, col. 2, ll. 39-42, col. 3, ll. 35-61 and Figure 1.
Accordingly, the skilled artisan would have used an SCR catalyst for that
purpose alone at the time of the invention, since both Cooper and Hawker
show that the overall reduction of NOx using the oxidation catalyst and
particulate trap systems were about 10% or less. See Cooper, col. 10, ll. 12-
40 and Figure 4 (depicting NOx removal of just slightly more than 10%);
Hawker 6, last ¶ (“The system keeps the total NOx emission about constant,
a reduction of less than 10% was measured over the various tests.”) and 14,
penultimate ¶ (“The system has been shown to reduce . . . NOx by 3% to 8%
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over a variety of cycles intended to reproduce driving conditions in urban
environments as well as in normal regulatory tests.”).
Similarly, as discussed above, Walker, Bell and Inoue all teach that
particulate matter is detrimental to SCR catalyst systems. Accordingly, the
Examiner has provided adequate evidence that the skilled artisan would have
had a reason for using the particulate matter combustion systems of Cooper
and Hawker to improve known SCR catalyst systems by removing and
combusting particulate matter for improved removal of NOx.
Patent Owners further argue that, because there is no NO2 downstream
of the particulate traps of Cooper and Hawker, the combination fails to teach
the “SCR-Adjusted gas mixture” requirement of the claims, even if the
combination is reasonable to the skilled artisan.
In support of the contention that no NO2 leaves the particulate filters
of Cooper, Patent Owners point to portions of Cooper that “the essential
point [of the invention] is that there is enough NO2 in the gas fed to the filter
to effectively combust the deposited carbon soots and like particulates [on
the filter].” Id. at 9 (quoting Cooper, col. 2, ll. 13-15 (emphasis added)).
Patent Owners also point to Cooper’s discussion of the combustion reactions
(a)-(c) which “provide for the removal of NO from the diesel exhaust as well
as providing the NO2 needed for soot removal.” Id. at 9 (quoting Cooper,
col. 2, ll. 39-48). Patent Owners point to Cooper’s mention of “[t]he NO2
required” to cause combustion of the particulate and “the theory that . . .
small amounts of NO2 and/or HNO3 can be provided in the diesel exhaust
gas prior to the diesel particulate filter . . . absorbed into the filter carbon
deposits, which are then ignited, and removed as harmless N2 and H2O
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more effectively and at lower temperatures than might otherwise be the
case.” Id. at 8 (quoting Cooper, col. 2, ll. 60-66).
We disagree with Patent Owners that the teachings of Cooper are so
limited. In addition to the teachings quoted by Patent Owners, Cooper
further teaches a preferred NO2 amount in the range of 100-2000 ppm and
further teaches that “it will be appreciated that the NO2 content can be
widely varied within and outside this range.” Cooper, col. 2, ll. 8-15.
Cooper further teaches that catalysts for producing NO2 from NO and O2 are
known in the art and are extensively used in the catalytic conversion of
automotive exhaust gas. Cooper, col. 2, l. 67 to col. 3, l. 2. Thus, Cooper
teaches the step of “passing said gas stream over an oxidation catalyst under
conditions effective to convert a portion of NO in the gas stream to NO2 to
produce a gas mixture comprising a mixture of NO and NO2, wherein the
gas mixture has an enhanced NO2 content relative to the gas stream entering
the oxidation catalyst” recited in claim 1.
Cooper further teaches supplying NO2 by decomposing a metal nitrate
provided in the exhaust gas stream. Cooper, col. 9, ll. 48-59. Accordingly,
it would be error to find that the skilled artisan would understand Cooper as
limiting the post-oxidation NO2 concentration to only that which would be
consumed during a combustion reaction. Rather, Cooper allows for a wide
variety of NO2 concentrations, including concentrations with excess NO2,
provided the concentration of NO2 is “enough NO2 . . . to effectively
combust the deposited soot and like particulates.” Cooper, col. 2, ll. 13-15.
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The Declaration testimony of Dr. Hüthwohl,14 in support of Patent
Owners’ reading of Cooper as being limited to only the amount used for
combustion (2nd Hüthwohl Decl. ¶¶ 11-16; see PO App. Br. 10) is
contradicted by the testimony of Dr. Patchett15 and Mr. Dettling.16 RAN 50-
51; Req. Res. Br. 3-4 (citing Patchett Decl. ¶¶ 8-9 and Dettling Decl. ¶ 11).
Dr. Patchett and Mr. Dettling rely on the teachings of Hawker and
Pollington17 as evidence that Continuously Regenerating Trap (CRT)

14 Second Declaration of Dr. Georg Hüthwohl, executed on October 28,
2013, PO App. Br., Exhibit H (“2nd Hüthwohl Decl.”). Dr. Hüthwohl
testifies to being a named inventor of the ’010 patent and having over 25
years of experience in the field of exhaust aftertreatment systems. See 2nd
Hüthwohl Decl. ¶¶ 1-7. Dr. Hüthwohl is qualified to testify as to the state of
the art at the time of the invention, but is properly considered an interested
party in this proceeding. See also First Declaration of Dr. Georg Hüthwohl,
executed February 19, 2013, PO App. Br., Exhibit D (“1st Hüthwohl Decl.”).
15 Declaration of Dr. Joseph A. Patchett, executed November 26, 2013, Req.
Res. Br., Exhibit 13 (“Patchett Decl.”). Dr. Patchett testifies to having
worked for Requester, BASF Corporation, since 1989 in the development of
catalysts and designed chemical reactors for SCR reduction of NOx.
Patchett Decl. ¶ 2. Dr. Patchett is qualified to testify as to the state of the art
at the time of the invention, but, due to his employment with Requester at
the time of his testimony, is properly considered an interested party in this
proceeding.
16 Declaration of Mr. Joseph C. Dettling, executed March 18, 2013, Req.
Res. Br., Exhibit 12 (“Dettling Decl.”). Mr. Dettling testifies to having
worked for Requester, BASF Corporation, for 44 years, until his retirement
in 2007, in the development of catalysts, including diesel particulate filters
and SCR catalyst development. Dettling Decl. ¶¶ 2-3. Mr. Dettling is
qualified to testify as to the state of the art at the time of the invention and is
not considered an interested party in this proceeding at the time of his
declaration testimony due to his retirement from BASF in 2007.
17 U.S. Patent Application Publication 2006/0263285 A1, published
November 23, 2006, in the name of inventors Stephen David Pollington et
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systems, and the CRT system described in Cooper, in particular, were
known at the time of the invention to provide “the ideal range of NO to NO2
for NOx reduction in a SCR catalyst,” i.e., a NO2 concentration between 20%
and 75%. Patchett Decl. ¶ 8.
Indeed, Hawker indicates that an increase in the NO2 concentration
after the particulate trap is a function of “the catalyst volume and the
temperature as well as on the NO2 consumed during the particulate
combustion in the trap.” See Hawker 6, last ¶. Hawker further states that
“[i]ncreased NO2 emission is not wanted at the tailpipe, but necessary for the
function of the system” and that Figure 4.3 shows the increase of NO2.
Hawker, ¶ spanning 6-7.
Patent Owners argue that the Examiner improperly relied on Hawker
as evidence of the inherency of the NO2 content exiting the particulate trap
of Cooper’s system, stating there is no evidence to suggest that Hawker’s
oxidation catalyst is the same as that taught by Cooper. PO App. Br. 10-11.
We agree with the Patent Owners that Hawker’s teaching of NO2 slip is not
necessarily evidence that the system of Cooper has similar NO2 slip because,
though Hawker cites to Cooper as a reference, Hawker does not clearly
identify the system used in Figure 4.3 as being the system described in
Cooper.

al. It is acknowledged by both parties that this application, having an
earliest possible foreign priority filing date of April 17, 2003, is not prior art
to the ’010 Patent, which claims a PCT filing date of January 28, 1999, and
which claims foreign priority to an earlier application filed as early as
February 6, 1998.
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Nonetheless, Hawker teaches that at the time of the invention the
skilled artisan would have been capable of adjusting the oxidation catalyst to
achieve any degree of NO to NO2 conversion, including complete
conversion if desired. See Hawker, ¶ spanning 3-4 (“The size and the
coating of the catalyst is optimised to produce sufficient NO2 for soot
oxidation and therefore depends on the engine out NOx and particulate
emission and on the exhaust temperature.”). Hawker’s teaching is consistent
with the teaching in Cooper that “the NO2 content can be widely varied”
provided that “there is enough NO2 . . . to effectively combust the deposited
carbon soots and like particulates.” See Cooper, col. 2, ll. 11-15. Cooper
further states that oxidation catalysts were well known in the art at the time
of the invention. See id., col. 2, l. 67 to col. 3, l. 2 (“Known catalysts for
producing NO2 from NO and O2 may be used to generate the NO2 oxidant
for present purposes[.] Such catalysts are extensively used in the catalytic
conversion of automotive exhaust gases.”). The Examiner has established
that Alcorn, Kasaoka, Matsuda, and Tuenter all teach a preferred ratio of NO
to NO2 for optimized SCR catalyst reactions. Accordingly, it is reasonable
to find that one of ordinary skilled in the art was capable of optimizing the
oxidation catalyst and in doing so would have converted excess NO2 to
improve known SCR catalysis using known methods.
Moreover, we find little, if any, persuasive evidence that, in practice,
an oxidation catalyst system could be designed such that only the precise
amount of NO is converted to NO2 such that no less than all of the resulting
NO2 is consumed by particulate combustion at all times, as suggested by
Patent Owners. The record indicates that the converted NO2 concentration is
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conditional upon exhaust temperature and the amount of NO2 in the exhaust
stream, and that the exhaust temperature may vary over any particular
engine cycle. See Hawker, ¶ spanning 3-4, 9, last ¶, and Figures 5.2 and 5.3;
Dettling Decl. ¶ 19 (“[A]ctual NO2 content varies based on engine operation,
temperature and other factors, but providing the proper amount of oxidation
catalyst to provide the best amount of NO2 over the driving cycle was a
routine exercise.”). It would be unreasonable to find that the oxidation
catalyst and particulate trap of Cooper never produces excess NO2 under any
circumstances.
Moreover, Pollington, a later filed application states that “[a] problem
with the process described in [Cooper]” is that “[i]f there is insufficient PM
[particulate matter] on the filter to react with NO2 generated over the
oxidation catalyst or the temperature of the exhaust gas is below a preferred
range for combustion of PM in NO2, NO2 can slip past the filter and be
undesirably exhausted to atmosphere.” See Pollington, ¶¶ 3-6. The
Examiner and Requester both identify Pollington and the declaration of Dr.
Patchett as evidence that “Cooper inherently provides gas comprised of an
amount of NO2 ideal for SCR.” RAN 50; Req. Res. Br. 2-3.
Indeed, Pollington’s Example 2 describes
a laboratory, a bench mounted, heavy-duty diesel engine
fitted with a CRT® exhaust gas after-treatment system as
described in EP 0341832, i.e. a platinum on aluminium-based
oxidation catalyst for oxidising NO to NO2 and a downstream
ceramic wall-flow diesel particulate filter, was used to test the
principle of NO2 decomposition shown in Example 1 in “real-
world” conditions.
Pollington, ¶ 74.
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Patent Owners argue that Pollington does not describe the exact
configuration of Cooper, and, thus, the described NO2/NOx ratio described in
the invention of Pollington is not reliable as evidence of the NO2/NOx ratio
described in Cooper. PO App. Br. 12. Moreover, Patent Owners argue that
it would be improper to rely on “the results depicted in [Pollington]”
because Pollington does not describes what was known at the time the
invention was made, but rather a later established inherent feature. Id.
We disagree with Patent Owners. Pollington specifically states that
its system is a “system as described in EP 0341832.” Pollington, ¶ 74. EP
0341832 is the European equivalent of Cooper. Patent Owners have not
persuasively demonstrated any deviation of the European equivalent from
Cooper or any contrary data to show that Pollington does not report exactly
as it describes, i.e., data regarding a system as described in Cooper.
Accordingly, we agree with Requester that Pollington describes what is
inherent in the system described in Cooper, namely NO2 slip, such that the
gas stream leaving the particulate filter has a NO/NO2 ratio that falls within
a range recited in claim 14 and that is recognized as a “SCR-Adjusted gas
mixture.”
Further, as discussed above, the claims do not require any particular
NOx conversion and are met by the presence of some amount of NO2 present
after the particulate trap. Thus, Hawker and Pollington sufficiently
demonstrate that, at least under some conditions such as low particulate
collection or low temperature, excess NO2 is generated by an oxidation
catalyst and some NO2 slips past the particulate filter into the exiting exhaust
gas, meeting the limitations of an “SCR-Adjusted gas mixture.”
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Patent Owners also argue that Hawker fails to teach the claimed
invention because the ratios taught in Figure 4.3 are absent temperature data
or a description of the particular cycles performed therein, i.e., that any
particulate matter was reacted in these cycles. PO App. Br. 11. In
particular, Patent Owners contend that the test cycles for the data shown in
Figure 4.3 operate at too low a temperature for particulate combustion, and
thus, the reported NO2/NOx ratio is presented without any NO2 consumed
from particulate combustion. Id. at 13-16. In support of this argument,
Patent Owners cite to paragraphs 19-25 of the Hüthwohl Declaration. Id.
Requester’s expert disputes Dr. Hüthwohl’s testimony and states that
“[t]he chemical reaction kinetics of soot oxidation are not limited by a
discrete temperature – in other words, there is no ‘on/off switch’ for soot
oxidation” and points out that Hawker teaches that oxidation is continuous at
temperatures over 250 °C, but the skilled artisan would expect that some
combustion would have occurred at temperatures less than 250 °C. Patchett
Decl. ¶ 11.
We do not find Patent Owners’ argument persuasive. Dr. Hüthwohl’s
supporting evidence describing the Braunschweig cycle is silent as to
temperature limitations. See 2nd Hüthwohl Decl. ¶ 21, Exhibit A. Dr.
Hüthwohl similarly provides no evidence as to the temperature range of the
UBA cycles described in Hawker. Additionally, Hawker describes that the
system operates at a temperature window of approximately 200-450 °C.
Hawker 9, last ¶. Moreover, the art of record indicates that heavy duty
diesel engine temperatures generally vary around 250 °C, the temperature
necessary for continuous particulate oxidation, according to Hawker. See
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e.g., 2nd Hüthwohl Decl., ¶ 22, Exhibit B (“Heavy duty diesel engines tested
on the FTP cycle produce medium to high exhaust gas temperatures.
Generally, the temperature is at a medium level between 250 and 350°C, but
there are hot sections with temperatures reaching as high as 450°C.”);
Cooper, col. 1, ll. 24-29 (“While the temperature of diesel exhaust gas may
be as high as 500° C., it is generally considerably lower, e.g., 300° C. or
below.”); Hawker, Figures 5.2 to 5.3; Feeley18 1, col. 2, first full ¶ (teaching
low temperature U.S. test cycles can range from about 100-400 °C and that
European tests are generally at hotter temperatures); Inoue, col. 5, l. 60 to
col. 6, l. 5 (“When the operation is switched from the idling to the conditions
of high load and a large revolution number, for example, the temperature of
the exhaust gas at the outlet of the manifold sharply rises from about 150° C.
to about 700° C. over a period or about 1 minute.”). Thus, we are not
persuaded that the NO2/NOx ratio reported in Hawker is in error.
Additionally, the claims are not limited to a method of operation at
any particular temperature and low gas exhaust temperatures create the exact
situation described in Pollington in which NO2 slip would occur. See
Pollington ¶ 5.
Patent Owners further contend that Hawker is not an enabled
disclosure because the reference is “ambiguous,” “internally inconsistent”
and that “the test data for the Braunschweig cycle in Hawker is incorrect and

18 J.S. Feeley, et al., “Abatement of NOx from Diesel Engines:
Status and Technical Challenges,” Society of Automotive Engineers
Technical Paper Series, No. 950747 (1995) (“Feeley”). Feeley is applied as
additional prior art in some rejections maintained by the Examiner. See PO
App. Br. 2-3; RAN.
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unreliable.” PO App. Br. 16. In particular, Dr. Hüthwohl states that the
60% NO2/NOx emission result in the Braunschweig cycle test in Figure 4.3
is impossible where Hawker further describes only 5% NO2/NOx in the
exhaust gas and conversion of only 20% to 50% of the engine NOx to NO2.
Id. at 16-17 (citing Hüthwohl Decl. ¶ 26). Patent Owners also contend that
it would have taken undue experimentation “to engineer the claimed
components into an operational aftertreatment system.” PO App. Br. 23-24
(citing Hüthwohl Decl. ¶¶ 35 and 50).
Requester asserts that Dr. Hüthwohl’s testimony is unsupported by
underlying evidence, and that a non-enabling reference can still be evidence
of what a skilled artisan would have understood at the time of the invention.
Req. Res. Br. 5-6 (quoting, inter alia, Symbol Techs. Inc. v. Opticon Inc., 935
F.2d 1569, 1578 (Fed. Cir. 1991)(“A non-enabling reference may qualify as
prior art for the purpose of determining obviousness.”)). Requester further
contends that Patent Owners have not sufficiently shown any particular
design difficulties in combining the Cooper or Hawker systems with SCR
catalysts known in the art. Req. Res. Br. 7.
We agree with Requester. Patent Owners have only shown some
inconsistency with Hawker’s teaching of 60% NO2/NOx (Braunschweig
cycle) in an output stream, but is silent as to any reason why the 20%
NO2/NOx (UBA cycle) teaching, which meets the NO/NO2 ratio
requirements of claim 14, would have been inconsistent with the other
disclosures in Hawker. Despite whether the 60% NO2/NOx number in
Hawker is accurate, the skilled artisan would understand from the teachings
of Hawker that a gas stream exits the particulate trap with an NO2 content
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greater than that of the 5% NO2/NOx in the original exhaust gas, which
constitutes an NO2 enriched stream consistent with our understanding of the
term “SCR-Adjusted gas mixture.” Hawker, ¶ spanning 6-7 (“Increased
NO2 emission is not wanted at the tailpipe, but necessary for the function of
the system.”). We further agree that Patent Owners have not demonstrated
that the combination requires undue experimentation or any adjustments to
the prior art other than, perhaps, altering amount of NO to NO2 conversion,
which the prior art suggests would have well within the skill of an ordinary
artisan. See Cooper, col. 2, ll. 8-15 and col. 2, l. 67 to col. 3, l. 2; Hawker, ¶
spanning 6-7; Alcorn, Figure 2.
Secondary Considerations
Patent Owners also contend that secondary considerations weigh in
favor of a determination of non-obviousness, including commercial success,
an unexpected synergistic effect, a long-felt but unmet need in the art, and
the significant amount of time that has passed between the prior art and the
earliest filing date of the application that became the ’010 patent. PO App.
Br. 24.
Commercial Success
As evidence of commercial success, Patent Owners rely on the
Second Declaration of Dr. Hüthwohl, which includes, as Exhibit H, a Frost
and Sullivan report (“Frost and Sullivan Report”). PO App. Br. 25-28. The
Frost and Sullivan Report identifies that, in 2011, 79.6% of Class 8 heavy
duty diesel trucks included an after treatment system that performs the
claimed methods. 2nd Hüthwohl Decl. ¶¶ 51-60 and Exhibit H. Patent
Owners contend that this evidence is sufficient as evidence of commercial
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success because it shows that an embodiment of the invention has significant
sales in a relevant market, and thus “it is presumed that the commercial
success is due to the patented invention.” PO App. Br. 26 (citing Neupak,
Inc. v. Ideal Mfg. & Sales Corp., 41 Fed. Appx. 435, 440 (Fed. Cir. 2002);
Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120,
1130 (Fed. Cir. 2000)). We agree with Patent Owners that the evidence
provided19 meets this presumption, and, if left unchallenged, would have
been persuasive. However, Requester raises several issues which draw into
question the weight that should be accorded to Patent Owners’ evidence of
commercial success in light of the evidence of obviousness and the scope of
the claims on appeal. Req. Res. Br. 8.
It is the established rule that “objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971); see also
MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., 731 F.3d 1258,
1264–65 (Fed. Cir. 2013); In re Huai–Hung Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011); In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003); In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). In MeadWestVaco, for

19 Patent Owners’ opinion evidence that the NO:NO2 ratio for the heavy duty
class 8 engines is consistent with the ratios recited in claim 14, because
“[t]he EPA 10 requirements for NOx of only 0.2 g/bhp-hr is extremely low
and could not be met by an SCR that does not utilize the proper NO to NO2
ratio as claimed by the ’010 Patent,” is not particularly persuasive without
additional supporting evidence. Given the breadth of the ratio range recited
in claim 14 and our definition of “SCR-Adjusted,” we agree that this ratio
necessarily would have been met by the heavy duty class 8 engine systems
for the similar reasons as discussed above with respect to the oxidation
catalyst and particulate trap systems of Cooper and Hawker.
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example, the Federal Circuit held that secondary considerations of
nonobviousness, including commercial success, were problematic that
involved only fragrance-specific uses, where the claims at issue were not
fragrance-specific. MeadWestVaco, 731 F.3d at 1264-1265. In the instant
case, as in MeadWestVaco, evidence directed to a very narrow application is
insufficient when the relevant market is much broader. See also In re Law,
303 F.2d 951, 1162 (CCPA 1961) (“Thus, assuming the affidavits are a
proper showing of commercial success, they do not show commercial
success of dockboards covered by the appealed claims which are not limited
to the bead of claim 13.”); Rambus, Inc. v. Lee, 2014 WL 4294545, *46
(PTAB 2014) (“Showing success for a commercial embodiment, like a
modified DRAM capable of high speeds, within a claim scope that does not
recite, inherently require, or even enable the touted high speeds, is not
sufficient to rebut obviousness across the whole claim scope.”).
The method of the claimed invention is directed towards reducing
particulates and NOx “in a gas stream,” which is not limited to vehicle
exhaust or diesel exhaust particularly. The appealed claims also are only
directed to “reducing” NOx, but are not limited to any particular degree of
reduction or any emission standard that must be met. Patent Owners’
evidence, however, is limited to only class 8 heavy duty diesel trucks. Req.
Res. Br. 8; Frost and Sullivan Report. Patent Owners state that it chose
Class 8 heavy duty vehicles “because they are the largest class of trucks in
the United States and, because of their size, it is hardest to design emissions
control systems to meet EPA 10 for Class 8 trucks.” PO App. Br. 26 (citing
2nd Hüthwohl Decl. ¶ 52).
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Here, the scope of the claims includes subject matter which is prima
facie obvious and for which Patent Owners have not rebutted the Patent
Office’s prima facie case. Patent Owners’ evidence is directed to only one
class of vehicle with a very low NOx emission standard. However, Patent
Owners’ method would also have been applicable and for sale to other
vehicles outside of the class 8 heavy duty trucks, as well as for other
emission sources other than vehicles, because the appealed claims are not
limited to the low NOx emissions required for class 8 heavy duty trucks.
Yet, it appears that Patent Owners have only supplied market share
information for a particular vehicle class that also happens to be the class
that is “hardest to design emission control systems to meet EPA 10”
standards. However, the appealed claims also are not limited to any
particular source of the gas stream from which the pollutants are removed,
let alone to a particular class of trucks and engines. In sum, the relevant
market of Patent Owners’ product is much broader than the evidence
suggests and the commercial success evidence is insufficient. See RAN 62.
Patent Owners do not explain whether its claimed method is sold for
use in other vehicles or other emissions process within the scope of the
claims, and, if not, why the entire market for this product is not relevant. It
is unclear whether emissions from other vehicles and other emissions
sources in general can meet EPA requirements without using the claimed
method.20 In other words, the evidence of commercial success is not

20 For example, while the Frost and Sullivan report shows that there are two
systems (Configuration 1 and Configuration 2) that meet the stringent EPA
10 standards for class 8 heavy duty diesel trucks, Patent Owners identify that
at least one of the competitors, Navistar, which did not use a particulate trap,
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directed to a mere “reduction of pollutants” as recited in the claims, but
rather a particular degree of “reducing pollutants” that is not recited in the
claims.
Further, Requester points out that a significant group of sales reported
by Frost and Sullivan is directed to Freightliner, which is a subsidiary of, or
owned by, one of the Patent Owners, Daimler AG, which also has an interest
in Detroit Diesel Corporation (DDC). Req. Res. Br. 10 (citing Voss21 Decl.
¶ 31). Dr. Voss testifies that longstanding relationships and corporate
loyalty are considerations in Freightliner’s selection of their particular
system, particularly since the system is sold by the same company that owns
Freightliner. Voss Decl. ¶ 33. The Frost and Sullivan Report also indicates
that “Western Star” is owned by Daimler. Frost and Sullivan Report 15.
Patent Owners do not dispute a commercial connection between
Freightliner, Western Star, and DDC and Daimler AG. According to the

but relied solely on exhaust gas recirculation (EGR) in combination with an
SCR catalyst, “was forced to abandon its EGR system . . . and move to the
better operating SCRT [oxidation catalyst plus particulate trap]
configuration 1 system . . . that employs the claimed methods.” PO App. Br.
27. Similar evidence is not provided across the entire scope of the claimed
invention.
21 Declaration of Dr. Kenneth E. Voss, executed March 20, 2013, Req. Res.
Br., Exhibit 18 (“Voss Decl.”). Dr. Voss testifies to having worked for
Requester, BASF Corporation, since 1989 in the development of advanced
emission control catalysts for diesel engines and diesel powered vehicles.
Voss Decl. ¶ 3. Mr. Voss also testifies to being familiar with markets for
pollution abatement systems and relationships between original equipment
manufacturers and catalyst suppliers in the vehicle industry. Dr. Voss is
qualified to testify as to the state of the art at the time of the invention, but,
due to his employment with Requester at the time of his testimony, is
properly considered an interested party in this proceeding.
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Frost and Sullivan Report, these connections affect the evidence of 37,050
units (35,421 Freightliner/DDC and 1,629 Western Star/DDC) out of
175,666 units sold in 2011, or about 21% of the market. Nonetheless, this
evidence raises a question as to whether the sales of at least 21% of the
market was influenced by some factor other than the invention recited in the
claims.

Unexpected Results
Patent Owners argue that the invention recited in the appealed claims
shows a previously unknown and unexpected synergistic effect. PO App.
Br. 29. Patent Owners contend that it is surprising that (1) a pre-oxidation
step increases conversion of NOx to NO2 and (2) the incorporation of a
particulate filter permits still higher conversion of NOx. Id. at 30 (quoting
’010 patent, col. 1, l. 61 to col. 2, l. 12); Gärtner22 Decl. ¶¶ 13-14 (opining
that the invention shows dramatic improvement in NOx reduction over
conventional SCR systems). Patent Owners provide the following table to
demonstrate the results described in the ’010 patent.

22 Declaration of Dr. Uwe Gärtner, executed October 28, 2013, PO App. Br.,
Exhibit I (“Gärtner Decl.”). Dr. Gärtner testifies to having worked for a
Patent Owner, Daimler, since 1985 as was responsible for aftertreatment
systems development for compliance with “EURO IV, EURO V, EURO VI,
EPA07, [and] EPA10” regulations and “performance and robustness of the
components in these systems.” Gärtner Decl. ¶ 3. Dr. Gärtner is qualified to
testify as to the state of the art at the time of the invention, but, due to his
employment with a Patent Owner at the time of his testimony, is properly
considered an interested party in this proceeding.
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PO App. Br. 30-31.23
We are not persuaded that the results presented in the ’010 patent, and
displayed above in tabular form in Patent Owners’ appeal brief, is sufficient
evidence of a result that is unexpected in light of the prior art of reference.
To show unexpected results, Patent Owners must establish: “(1) that there
actually is a difference between the results obtained through the claimed
invention and those of the prior art,. . . and (2) that the difference actually

23 We note that Patent Owners’ reported percentage are not always
consistent with either Figures 1-3 or col. 3, l. 36 to col. 4, l. 15 of the ’010
patent. For example, in Figure 1, the results are described as “about 90%,”
but appear to reach up to 95% conversion at 350° C in Figure 1. For Figure
2, the ’010 patent describes conversion at 225° C in “excess of 95%,” but the
table describes a maximum of 90% conversion. Review of Figure 2 shows
about 95% conversion at 250° C and 275° C, rather than the 90% shown in
the table above, and 90% conversion at 300° C and 325° C, rather than the
80% shown in the table above. Further, Figure 3 shows an improvement
close to 98 or 99% conversion, rather than the 95% conversion reported at
250° C.
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obtained would not have been expected by one skilled in the art at the time
of invention.” In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). “[O]ne
should consider the substantiality of the differences between the properties
of the prior art and those of the invention to determine the significance of
those differences” and, thus, “to determine the weight such evidence should
be given in the obviousness analysis.” Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 769 F.3d 1339, 1344-1345 (Fed. Cir. 2014) (en banc).
“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.Cir.1991).
While these results are evidence of some improvement in using an
oxidation catalyst in combination with SCR over SCR alone and some
improvement in using a particulate trap in combination therewith (at least at
some temperatures), as recited in the appealed claims, the skilled artisan
would have expected such an improvement in light of the prior art.
The prior art is replete with teachings that SCR catalytic NOx
conversion is improved with a significant presence of NO2 in the gas stream
(see Kasaoka, Avila, Matsuda and Tuenter; RAN 5, 10, 39, and 45), and
even suggests the use of an oxidation catalyst to achieve optimum NO2
conversion to improve SCR catalysis. See Alcorn and Matsuda; RAN 4-5
and 39. Similarly, the prior art teaches that using a particulate removing
soot filter prior to ammonia SCR catalytic reactions improves NOx
conversion. See Bell; RAN 20. Accordingly, statements in the ’010 patent
and Dr. Gärtner’s declaration are contrary to the evidence of record and fail
to explain why the improved results presented in the ’010 patent would have
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been better than the improved results demonstrated in the prior art. Since
Figure 2’s data also represents what is in the prior art, any improvement in
the art by the claimed invention is demonstrated only by a comparison of
Figure 2 data to Figure 3 data.
Further, we are not persuaded that the improvement shown in
comparing Figure 2 data with Figure 3 data demonstrates a synergistic
effect. “[W]hen an inventor tries to distinguish his claims from the prior art
by introducing evidence of unexpected ‘synergistic’ properties, the evidence
should at least demonstrate ‘an effect greater than the sum of the several
effects taken separately.’” Merck & Co., Inc. v. Biocraft Laboratories, Inc.,
874 F.2d 804, 808-09 (Fed. Cir. 1989) (quoting Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976)).
It is recognized in the art that successful removal of up to 20-25% of
NOx “or possibly higher” is effectively achieved even without adjusting the
NO2 concentrations. ’010 patent, col. 1, ll. 13-21; see also col. 3, ll. 35-61
and Figure 1 (showing NOx removal of between 20 and 95% for
conventional SCR catalytic reduction with removal increasing with
increasing temperature and concentration of NH3 used as a reductant).
Patent Owners’ data presented in the table above shows from 0% to about
15% improvement in NOx removal with the addition of particulate trap
combustion when comparing the percentage reported from Figures 2 and 3
in Patent Owners’ table reproduced above. However, Patent Owner has
provided no evidence that the demonstrated improvement in NOx reduction
is more than would have been expected by the skilled artisan. For example,
Cooper and Hawker teach that particulate combustion reduces NOx up to
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10% (Cooper, Fig. 4; Hawker, p. 1, Abstract, first ¶ (between 3% and 8%
reduction in NOx) and p. 6, last ¶ (NOx reduction of “less than 10% was
measured”). Accordingly, the data does not present a synergistic effect
(greater than the sum) but rather an improvement in NOx reduction
consistent with an amount that would have been expected by adding
combustion of NO2 in a particulate trap according to Cooper and Hawker.
Accordingly, we give little, if any, weight to Patent Owners’ evidence
of unexpected and synergistic results.

Age of Prior Art
Patent Owners argue that the age of the prior art references, in
particular that of Cooper, which was published 10 years before the earliest
claimed filing date of ’010 patent, “is strong evidence of non-obviousness.”
PO App. Br. 33 (citing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1354
(Fed. Cir. 2013). We disagree that, in this case, the ages of the prior art are
particularly relevant.
Initially, Leo states that “[t]he length of the intervening time between
the publication dates of the prior art and the claimed invention can also qualify
as an objective indicator of nonobviousness.” Leo, 726 F.3d at 1359
(emphasis added) (citing Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d
1361, 1376–77 (Fed. Cir. 2000)). Yet, Leo, like Ecolochem (id.), discusses
the ages of the references only in the context of whether the record showed
that an unsolved need in the art was long-felt. Leo, 726 F.3d at 1359 (“it was
not until the ’013 patent’s filing in 2000—twenty-two years after Turi and
fourteen years after Dikstein-that the solution to the long felt but unsolved
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need for a combined treatment of vitamin D and corticosteroid was created.”)
(emphasis in original). In discussing the age of the reference only in context
with a showing a long-felt but unmet need in the art, the holding in Leo
regarding the age of the reference is consistent with Federal Circuit holding
that the age of references is not relevant to a determination of obviousness.
See Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016) (“our
decision in Leo Pharmaceutical is entirely consistent with established
precedent that ‘[t]he mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.’” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)) (additional
citations omitted).
Moreover, in this case, the ages of the references are consistent with
and responsive to the constantly changing emissions standards that existed at
the time of the references. The prior art suggests that NOx removal, to the
extent that SCR catalytic reduction alone was not sufficient, was not needed
in the art until 2010 standards required a dramatic reduction. See 1st
Hüthwohl Decl. ¶¶ 9-11 (describing “new” and “more restrictive” 2010 EPA
limits for diesel engines); 2nd Hüthwohl Decl. ¶ 57.
Cooper, which was published in 1988, identifies but is not particularly
concerned with NOx removal, such that Cooper even includes a discussion
of supplying additional NO2 to the system from metal nitrates for maximum
particle removal. See Cooper. Similarly, although Hawker discusses
“[f]urther standards are planned in 2000 (Euro 3) and 2005 (Euro 4) . . . in
Europe” (Hawker 2, first ¶), Hawker nonetheless teaches “[f]or ozone
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formation there is no negative influence expected due to the increased NO2
emission because NO, NO2 and O3 react very fast in the environment.”
Hawker 7, first ¶. Hawker, which was published in 1997, a year before the
earliest claimed priority date of the ’010 patent, is not of significant age to
be a significant factor in the obviousness analysis.

Long-felt Unmet Need
Patent Owners argue that the invention recited in the appealed claims
“addressed a long felt but unaddressed need to reduce both particulates and
NOx emissions in diesel engines” and that “none of the prior art systems
were able to accomplish this task.” PO App. Br. 34 (citing Gärtner Decl. ¶¶
9-12).
Patent Owners’ argument is consistent with the broad scope of the
claims, which does not require any particular degree of reduction of
particulates or NOx emissions. However, we disagree with Patent Owners
that the evidence supports a finding that reduction of both particulates and
NOx emissions was not met at the time in the art at the time of the invention.
For example, Cooper and Hawker both teach oxidation catalyst and
particulate trap systems that remove particulate matter and NOx from an
exhaust gas stream. See Cooper, col. 10, ll. 16-18 (“The invention provides
means for reducing both NO content in the gas and carbon deposit on the
filter.”) and Fig. 4 (showing over 10% NOx reduction in addition to
substantial particulate reduction); Hawker, p. 1, Abstract, first ¶ (between
3% and 8% reduction in NOx) and p. 6, last ¶ (NOx reduction of “less than
10% was measured”). Similarly, Bell teaches using a particulate removing
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soot filter prior to ammonia SCR catalytic reactions, which would provide
for both particulate matter and NOx reduction. Bell, col. 3, ll. 8-18 and 57-
68 and Fig. 2.
Accordingly, Patent Owners further argue that “it has been recognized
by those skilled in the art for at least 40 years that particulate matter and
NOx emissions from diesel engines are harmful to health and the
environment and are unwanted pollutants” and that the claimed invention is
the only way to “adequately reduce” or “completely eliminate” both NOx
and particulate emissions from diesel exhaust. PO App. Br. 36 and 37.
Patent Owners’ alternative interpretation of the need in the art is not
persuasive for several reasons. First, despite the recognition in the art that
NOx and particulate matter (soot) are pollutants (see Gärtner Decl. ¶ 8 (citing
Fessler,24 col. 1, ll. 26-49)), Patent Owners have not directed us to evidence
that the prior art did not meet the environmental reduction requirements for
the time and thus “adequately reduce” NOx and particulate matter. Rather,
the evidence shows that, at the time of the invention, there was far less
stringent NOx emissions requirements, but that it was anticipated that new
regulations would have significant NOx reduction requirements. Hawker 2,
first ¶; Patchett Decl. ¶ 23; Dettling Decl. ¶ 18 (“[A]t the time of the patent, .
. . the emissions regulations were such that HC, CO, NOx and particulate
matter could be regulated a number of different ways to meet the existing
emission regulations”) and ¶ 20 (“[E]ngine controls alone were more than
sufficient to meet emission standards until about 1994. . . . Until the

24 U.S. Patent 3,702,236, issued November 7, 1972, to Leroy E. Fessler
(“Fessler'”). See Gärtner Decl. ¶ 8.
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implementation of the stricter NOx rules in 2007 in the United States, when
the NOx limits were reduced to 1.2, and later in 2010 to 0.2, there was no
need for SCR to reduce NOx in diesel engine systems.”) and Exhibit 9. Bell,
which was filed in 1993, states that “[w]ith the introduction of new and
tighter standards scheduled to become effective in the near future, NOx
reduction in diesel exhaust will require new catalytic systems capable of
functioning effectively in high oxygen atmospheres.” Bell, col. 1, ll. 42-46.
Accordingly, the prior art shows that the actual need in the art is reflected in
the emission requirements at any given time. See Ecolochem, Inc. v. S. Cal.
Edison Co., 227 F.3d 1361, 1377 (Fed. Cir. 2000) (“This evidence
[guidelines issued a year before the filing date] supports the district court’s
finding that Ecolochem’s process was developed not in response to a long-
felt need in the power industry, but in response to a shortly-felt requirement
imposed by EPRI’s guidelines.”).
Also, Patent Owners have presented no evidence that complete
elimination of both NOx and particulate matter was a need at any time. To
the contrary, even Fessler, raised by Patent Owners, advocate only the
reduction “of oxides of nitrogen to a harmless state.” Fessler, col. 1, l. 49;
see also Gärtner Decl. ¶ 11 (“[d]espite decades of attempts by those skilled
in the art to create a system that could remove significant amounts of both
particulate matter and NOx . . . ”) (emphasis added). Patent Owners put forth
no evidence of what a sufficient and harmless removal amount would be,
and thus, it is not unreasonable to rely on the changing emission standards to
reflect the immediate need.
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Patent Owners point to Environmental Designs, Ltd. v. Union Oil Co.
of Cal., 713 F.2d 697 (Fed. Cir. 1993), for the principle that unmet
environmental needs are not merely tied to regulation. PO App. Br. 35. In
Environmental, the Federal Circuit found that there was “[a] need to remove
as much sulfur as possible from the air we breathe.” Environmental, 713
F.2d at 697. Moreover, there was a finding that regulations could not be
tightened because “‘known technical means of accomplishing the desired
results’ were not available.” Id. We have insufficient evidence to make
such similar findings on this record. As discussed above, we find
insufficient evidence of a need to completely remove all NOx. Also,
although it appears there was warning about more stringent standards in each
successive regulation (see Hawker 2, first ¶; Patchett Decl. ¶ 23; Dettling
Decl. ¶ 9 and Exhibits 1 and 2), we have not been directed to persuasive
evidence that there was concern within the regulatory bodies that these
regulations could not have been met by the technology existing at the time.
See, e.g., Dettling Decl. ¶ 20 (“There were plenty of systems and approaches
on the market to handle the regulations up until 2010.”), which is not
disputed by Patent Owners. See 1st Hüthwohl Decl. ¶¶ 9-10; Patchett Decl. ¶
23.
Further, Patent Owners have not shown that the method of the claimed
invention “completely eliminates” both NOx and particulate material, and
thus, in fact, meets the need identified. In re Cavanagh, 436 F.2d 491, 496
(CCPA 1971) (“[I]t was still incumbent upon appellant, if he wished by this
method to rebut the inference of obviousness arising from the similarity of
his process to the prior art, to bring forward evidence of his satisfaction of
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the need.”). The ’010 patent states that NOx conversion reached 100% only
at temperatures of 350° C and higher and only at 100% NH3 injection. See
’010 patent, col. 4, ll. 7-15 and Figure 3. Yet, the claims recited neither
temperature nor NH3 injection concentrations. Moreover, while the ’010
patent states that “of course, the particulates . . . are also controlled” (id.),
the ’010 patent does not describe whether the particulates are eliminated
completely. To the contrary, at best, the ’010 patent shows about 67%
particulate conversion. Id., col. 4, ll. 17-21 and Figure 4.
Finally, as discussed above, the claims do not reflect any particular
degree of reduction, and particularly do not require that either NOx or
particulate emissions are completely eliminated. The claims broadly read on
any amount of reduction, and thus the scope of what is obvious in the
invention recited in the claims is greater any need in the art present at the
time of the invention. Again, we find that the claims are too broad to be
commensurate with the need in the art. See Tiffin, 488 F.2d at 792.
Consideration of the Evidence as a Whole
In light of the evidence of record, we determine that the prior art
evidence is on the whole more persuasive of obviousness than non-
obviousness. The prior art objectives provide sufficient reasons for the
skilled artisan to have modified the prior art to arrive at the invention, while
the evidence of non-obviousness is not persuasive and is either contradictory
to the evidence of record or insufficiently commensurate with the broad
scope of the claim for a conclusion of non-obviousness.

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TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

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PATENT OWNERS:
Gregory P. Brummett
BRUMMETT TECH LAW, PLLC
2201 Cooperative Way, Suite 600
Herndon, Virginia 20171

THIRD-PARTY REQUESTER:
DIEHL SERVILLA LLC (CGG/COG)
33 Wood Avenue South
Second Floor, Suite 210
Iselin, NJ 08830